Ex Parte Min

Patent Trial and Appeal Board

Feb 26, 2016

12325945 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/325,945 12/01/2008
36802 7590 03/01/2016
PACESETTER, INC
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
XiaoyiMin
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.
A08Pl066 2498
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIAOYI MIN
Appeal2014-000633
Application 12/325,945
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Xiaoyi Min (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-15 and 17-19. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
THE INVENTION
Appellant's invention relates to leads for use with implantable
medical devices.
Claims 1 and 19 are independent. Claim 1 is illustrative and is
reproduced below:
Appeal2014-000633
Application 12/325,945
1. A method for designing a lead for use with an
implantable medical device, wherein the lead includes an
inductive filtering element to reduce lead heating due to radio-
frequency (RF) fields, the inductive filtering element having an
inductance and a parasitic capacitance, the method comprising:
identifying candidate components for use as the inductive
filtering element and determining tolerances for the inductances
and the parasitic capacitances of the candidate components;
determining suitable values for inductance and parasitic
capacitance sufficient to achieve a target impedance value at a
selected frequency based on the tolerances for the inductances
and parasitic capacitances of the candidate components; and
selecting particular components for use as the inductive
filtering element based, in part, on the suitable values for the
parasitic capacitance and the inductance.
THE REJECTIONS
The Examiner has rejected: 1
(i) claims 1---6, 13, 14, and 19 under 35 U.S.C. § 102(b) as being
anticipated by Stevenson (US 2007/0112398 Al, published ~vfay 17, 2007);
(iii) claims 7-12 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Stevenson; and
1 In an amendment after Final Rejection (submitted April 12, 2013)
Appellant cancelled claims 17 and 18. In an Advisory Action (mailed April
23, 2013) the Examiner indicated that the amendment would be entered for
purposes of appeal. Accordingly, we regard the claims as having been
cancelled, and thus the rejection of claims 17 and 18 under 35 U.S.C. § 112,
second paragraph, is moot. Appellant's Claims Appendix (Appeal Br. 13)
does not reflect the cancellation of claims 17 and 18.
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Appeal2014-000633
Application 12/325,945
(iv) claims 1-13, 17, and 19 provisionally on the ground of
nonstatutory obviousness type double patenting as being unpatentable over
claims 1-11 and 13-20 of U.S. Application No. 11/955,268.2
ANALYSIS
Claims 1-6, 13, 14, and 17-19--Anticipation--Stevenson
Appellant argues claims 1-6, 13, 14, and 17-19 as a group. Br. 6-9.
We take claim 1 as representative of the group, and claims 2-6, 13, 14, and
1 7-19 stand or fall with claim 1.
The Examiner finds that Stevenson discloses a method for designing a
lead for use with an implantable medical device, including the step of
"determining tolerances for the inductances and parasitic capacitances of the
candidate components." Final Act. 2, citing Stevenson, i-fi-1236, 247, 250,
267, 318, 329, and 379-382. The Examiner further cites to paragraphs 1, 28,
29, 32, and 230--'236 of Stevenson as disclosing "determining suitabie
inductance and parasitic capacitance values to achieve a target impedance
value at a selected frequency," as claimed. Id. In the Answer, the Examiner
states that "the selected frequency, as determined by the chosen Land C, is
[also therefore] based on the tolerances of L and C since L and C were
originally chosen to take such a tolerance into consideration." Ans. 7, citing
Stevenson, i-fi-1249, 329, and 347.
Appellant asserts that Stevenson does not disclose or suggest
"determining suitable values for inductance and parasitic capacitance
2 US Application No. 11/955,268 has since issued as a patent (US 9,233,240
B2, issued January 12, 2016).
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Appeal2014-000633
Application 12/325,945
sufficient to achieve a target impedance value at a selected frequency based
on the tolerances for the inductances and parasitic capacitances of the
candidate components." Br. 6, 8. Appellant thus argues that "Stevenson
makes no mention of component tolerance with respect to a target
impedance at a selected frequency," and that Stevenson does not "account[]
for the tolerance of a parasitic capacitance on an inductor as recited in the
claimed invention." Id. at 8.
We agree with the Examiner that "Stevenson is selecting a particular
resistance (i.e. Z, impedance) value at a selected frequency (in this example,
128MHz) based on the tolerances of the capacitor and inductor
components." Ans. 6. Specifically, Stevenson strikes "a careful balance ...
between the component losses of the L and C elements and the TANK
resonant bandwidth of the parallel TANK filter circuit," in order to "yield[]
an impedance of greater than 50 ohms at the resonant frequency while
keeping the bandwidth wide enough to make the device reiativeiy easy to
manufacture[] and calibrate." Stevenson, i-f 328. By balancing Land C,
Stevenson is determining suitable values for inductance (L) and [parasitic]
capacitance (C), and the values of Land Care sufficient to achieve a target
impedance value, e.g., greater than 50 ohms at a selected frequency ( 64
MHz for older style MRI and 128 MHz for newer MRI systems). See id.
Figs. 23 and 24 of Stevenson depict an exemplary "process of selecting the
appropriate values of L and C so that the TANK filter is resonant at the
correct frequency." Id. at i-f 346; Figs. 23 and 24. In designing a TANK
circuit, Stevenson discloses that "[ e ]ven after one goes through the decision
making process in FIG. 23, it may still be necessary to do some fine tuning
of the TANK," because "there is considerable manufacturing variability, for
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Appeal2014-000633
Application 12/325,945
example, when manufacturing the monolithic ceramic capacitors," which is
"also known as the tolerance," and is based on "the realities of the parasitic
losses within components." Id. at i-fi-1347, 250. Stevenson discloses, for
example, that "a ceramic capacitor of 50 pf ... might have +/-20% tolerance
based on the capacitance value," and that "[t]here is also variability in
manufacturing the inductor elements themselves." Id. at i1 34 7. Stevenson
further discloses that "for a very high Q TANK filter, it is expected that
some final tuning may be necessary so that the resonant frequency of the
resulting TANK is at or near the MRI RF pulsed frequency." Id. Because
inductor and capacitance tolerances are addressed (by final tuning) in order
for the resonant frequency of the resulting TANK [to be] at or near the MRI
RF pulsed frequency, and so that "the impedance at resonance is sufficient to
reduce or eliminate lead wire and distal TIP heating" (see id. at i1332), we
are not persuaded of error on the Examiner's part.
In view of the foregoing, the rejection of independent claim 1 as being
anticipated by Stevenson is sustained. Claims 2---6, 13, 14, and 17-19 fall
with claim 1.
Claims 7-12 and 15--0bviousness--Stevenson
Appellant relies solely on the reasons advanced for the patentability of
claim 1 in asserting that claims 7-12 and 15 are patentable. Br. 9. The
rejection of claims 7-12 and 15 is sustained for the same reasons set forth
above with respect to claim 1.
Claims 1-13, 17 and 19--Nonstatutory Obviousness-type Double Patenting--
Appellant does not present arguments directed to this provisional
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Appeal2014-000633
Application 12/325,945
rejection. Br. 6. As indicated in footnote 2 above, application No.
11/955,268, cited as the application over which the claims are rejected, has
matured into a patent. The claims in that issued patent appear to have been
amended subsequent to the time the Examiner's Answer was filed in this
appeal, and therefore the basis for the rejection may or may not still be
viable. Accordingly, we do not reach the merits of this rejection.
DECISION
The decision of the Examiner to reject claims 1---6, 13, 14, and 17-19
under 35 U.S.C. § 102(b) as being anticipated by Stevenson and to reject
claims 7-12 and 15 under 35 U.S.C. § 103(a) as being unpatentable over
Stevenson 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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