Ex Parte Min et al

Patent Trial and Appeal Board

Feb 16, 2016

12537916 (P.T.A.B. Feb. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/537,916 08/07/2009
36802 7590 02/18/2016
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.
A09Pl043 6351
EXAMINER
DIETRICH, JOSEPH M
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
02/18/2016 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 and INGMAR VIOHL
Appeal2013-007141
Application 12/537,916
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Xiaoyi Min and Ingmar Viohl ("Appellants") seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-28. Appeal Br. 3. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-007141
Application 12/537,916
CLAIMED SUBJECT MATTER
Appellants' invention "relates to leads for use with implantable
medical devices ... and, in particular, to components for use within such
leads to reduce heating during magnetic resonance imaging (MRI)
procedures." Spec. i-f 2. Claims 1, 27, and 28 are independent, and claim 1
is reproduced below, with emphasis added to particular limitations at issue
in this appeal.
1. A lead for use with an implantable medical device for
implant within a patient, the lead comprising:
an electrode for placement adjacent patient tissues;
a conductor operative to route signals along the lead
between the electrode and the implantable medical device, with
a portion of the conductor formed as an insulated coil and
configured to function as an inductive bandstop filtering element
for filtering radio-frequency (RF) fields; and
a conducting sheath electrically isolated from and
surrounding at least a portion of the conductor.
Appeal Br. 11 (Claims App.) (emphases added)
THE REJECTIONS 1
I. Claims 1, 10-13, 18-24, 27, and 28 stand rejected under 35
U.S.C. § 102(e) as anticipated by Stevenson (US 2010/0023000 Al,
published Jan. 28, 2010). Ans. 2.
II. Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevenson. Ans. 3.
III. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
1 In the Answer, the Examiner withdrew the rejections from the Final Office
Action dated August 30, 2012, and entered new grounds of rejection. Ans.
2-5. Accordingly, we only address the new grounds of rejection.
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Application 12/537,916
unpatentable over Stevenson and Bulkes (US 2008/0033497 Al, published
Feb. 7, 2008). Ans. 4.
IV. Claims 4---6 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stevenson and Wang (US 2004/0230271 Al, published
Nov. 18, 2004). Ans. 4.
V. Claims 7-9 and 14--16 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Stevenson and Yang (US 2007/0299490 Al, published
Dec. 27, 2007). Ans. 5.
ANALYSIS
Rejection I: Claims 1, 10-13, 18-24, 27, and 28
Appellants contest the rejection of claims 1, 10-13, 18-24, 27, and 28
collectively. See Reply Br. 2--4. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), we select claim 1 as the representative claim to decide the
appeal of the rejection, with claims 10-13, 18-24, 27, and 28 standing or
falling with claim 1.
In rejecting claim 1 as anticipated by Stevenson, the Examiner finds
that Stevenson discloses the claimed lead comprising, inter alia, conductor
12, 14 "configured to function as an inductive backstop filtering element for
filtering radio-frequency (RF) fields ... , with a portion of the conductor
formed as an insulated coil" 26', 28' (Fig. 10) and, alternatively, 26", 28"
(Fig. 11 ). Ans. 2 (citing Stevenson i-fi-f 16, 116, and 194--196). The
Examiner further finds that Stevenson discloses "a conducting sheath [EDS]
electrically isolated from and surrounding at least portions of the" conductor,
as called for in claim 1. Id. (citing, in relevant part, Stevenson i-f 144).
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Appeal2013-007141
Application 12/537,916
Figures 10 and 11 of Stevenson are reproduced below:
12 20
~
FiG.10
12 !
~ 14
FIG. 11 20
' 14
Figure 10 depicts a probe or catheter with the addition of "series
reactance components 26' and 28' shown in the form of a pair of inductors,"
and Figure 11 depicts "elements 26" and 28" each incorporat[ing] a parallel
resonant inductor and capacitor which is also known in the industry as a
band stop filter." Stevenson i-fi-f 125, 126 (italicized emphasis added); see id.
,-r,-r 44, 45, 144.
In contesting the rejection, Appellants present two arguments, which
we address separately, below.
First, Appellants disagree with the Examiner's findings that Stevenson
discloses a portion of a lead conductor "formed as an insulated coil" and that
"paragraph 116 of Stevenson ... teaches that the lead conductors are
insulated." Reply Br. 3. In particular, Appellants argue that Stevenson's
components 26' and 28' include diverting frequency selective element 20 in
combination with a pair of inductors that "are separate circuit components,"
and, thus, do not satisfy the claimed conductor with a portion "formed as an
insulated coil and configured to function as an inductive bandstop filtering
element for filtering radio-frequency (RF) fields." Id. Appellants further
argue that "[t]he[] mere fact that the leadwires are insulated from one
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Appeal2013-007141
Application 12/537,916
another and from other metal structures does not read on an insulated coil
configured to function as an inductive bandstop filtering element." Id.
The first issue is whether Stevenson's inductors 26', 28', 26", and 28"
satisfy the claimed "portion of the conductor formed as an insulated coil and
configured to function as an inductive bandstop filtering element," as recited
in claim 1. Appeal Br. 11 (Claims App.).
As to the first part of Appellants' argument, in consulting a dictionary,
we note that an inductor is defined as "a passive electronic component that
stores energy in the form of a magnetic field [and in] its simplest form, an
inductor consists of a wire loop or coil."
http://whatis.techtarget.com/ definition/inductor (emphasis added) (last
visited February 10, 2016). We further note that this definition is consistent
with what is depicted in Stevenson's Figures 10 and 11----cited by the
Examiner and reproduced supra-which depict inductors 26', 28', 26", and
28" included in an intermediate portion of lead wires 12, 14 and represented
as coils. See Ans. 2. Thus, we are not persuaded that Stevenson fails to
disclose inductors formed from the conductor.
As to the second part of Appellants' argument, upon reviewing the
record, we note that Stevenson discloses, "[l]eadwires 12 and 14 are
electrically insulated from each other and also electrically insulated from
any metallic structures located within the catheter body." Stevenson i-f 116
(emphasis added). We also note that Stevenson discloses that "elements 26''
and 28" each incorporate a parallel resonant inductor and capacitor which is
also known in the industry as a band stop filter." Stevenson i-f 126 (emphasis
added). In light of this explicit disclosure in Stevenson of parallel resonant
inductor and capacitor bandstop filters, we are not persuaded that Stevenson
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Appeal2013-007141
Application 12/537,916
fails to disclose an insulated coil configured to function as an inductive
bandstop filtering element.
Accordingly, the Examiner's finding that Stevenson discloses
"conductors (e.g. 12, 14) ... configured to function as an inductive bandstop
filtering element for filtering radio-frequency (RF) fields ... with a portion
of the conductor formed as an insulated coil" is supported by a
preponderance of evidence. Ans. 2. In other words, Appellants' first
argument does not persuade us that Stevenson's inductors 26', 28', 26", and
28" cannot be construed as the claimed "portion of the conductor formed as
an insulated coil," as recited in claim 1. Appeal Br. 11 (Claims App.).
Second, Appellants argue that even "assuming for the sake of
argument that [Stevenson's] lead conductors are formed into insulated
coils[,] one still does not arrive at the claimed invention[, because]
Stevenson [instead] disclose[ s] energy diversion circuits for use with
implantable leads that transfer energy induced from an MRI pulsed RF field
to an energy dissipating surface." Reply Br. 3--4 (citing Stevenson,
Abstract). Appellants explain, "the energy dissipating surface of Stevenson
[], [which the Examiner finds satisfies the claimed 'conducting sheath
electrically isolated from ... a portion of the conductor,'] is electrically
coupled to one or more of the conductors of the lead of Stevenson." Id. at 4
(emphasis added); see also Appeal Br. 7-8 (arguing that Stevenson's energy
dissipating surface "is electrically coupled to one or more of the conductors"
and, therefore, is not "a conducting sheath electrically isolated from ... a
portion of a lead conductor as recited in the claimed invention.").
Appellants argue that the Examiner's reliance on Figure 23 is misplaced
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Appeal2013-007141
Application 12/537,916
because Figure 23 "merely [schematically] illustrates the low frequency
behavior of the energy diversion circuit." Reply Br. 4.
In the present case, the Examiner finds that Stevenson's Figure 23
depicts "the sheath is electrically isolated from the conductors and reads on
the claims" in that "there is no heat or energy diverted to the sheath." Ans.
6. We reproduce Figure 23 of Stevenson below:
LOW H~E.QUl2NCY MOD~l
F!G,23
Figure 23 depicts insulation sheath 58 (or energy dissipating surface,
EDS) and that the "[ s ]witches are used to illustrate the properties of the
reactances at low frequency." Stevenson i-f 151.
The second issue is whether Stevenson's energy dissipating surface,
or EDS, which the Examiner finds satisfies the claimed "conducting sheath,"
is "electrically isolated from and surrounding at least a portion of the
conductor," as required by claim 1. Ans. 2, 6; Appeal Br. 11 (Claims App.)
(emphasis added).
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Prater, 415 F.2d 1393, 1404---05 (CCPA 1969); In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Upon reviewing Appellants' Specification, including Figure 2 and
paragraphs 31 and 33, we find nothing to persuade us that the Examiner's
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Appeal2013-007141
Application 12/537,916
interpretation of "a conducting sheath electrically isolated from ... at least a
portion of the conductor" that would read on Stevenson's energy dissipating
surface when in low frequency operation is unreasonably broad or
inconsistent with the Specification. See Appeal Br. 4 (emphasis added)
(citing paragraphs 31, 33, and Figure 2 of the Specification in support of the
claimed limitation "a conducting sheath electrically isolated from ... at least
a portion of the conductor."). Instead, Appellants' Specification fails to
mention-let alone describe-what "electrically isolated" means. See Spec.
i-fi-f l---60. Moreover, Appellants' assertion that Stevenson's sheath 58 (or
EDS) "is electrically coupled to one or more of the conductors" contradicts
Stevenson's Figure 23-which shows sheath 58 decoupled from connectors
12, 14. Reply Br. 4. Importantly, Appellants' assertion that Stevenson's
sheath 58 is "electrically coupled to one or more of the conductors" is
unpersuasive attorney argument without supporting evidence. Id.; see also
Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(attorney argument cannot take the place of evidence in the record).
Accordingly, the Examiner's finding that Stevenson discloses "a
conducting sheath electrically isolated from ... at least a portion of the
conductor" is supported by a preponderance of evidence. Ans. 2 (citations
omitted).
For the foregoing reasons, we affirm the rejection of claim 1 under
Rejection I, and of claims 10-13, 18-24, 27, and 28, which each fall with
claim 1.
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Appeal2013-007141
Application 12/537,916
Rejections 11-V: Claims 2-9, 14-17, 25, and 26
Appellants do not present additional arguments in contesting the
rejections of dependent claims 2-9, 14--17, 25, and 26 under Rejections II-
V, and simply rely on those same arguments discussed, supra, with respect
to Rejection I. See Reply Br. 4--5. Accordingly, and for the same reasons
we affirm the rejection of claims 1, 10-13, 18-24, 27, and 28 under
Rejection I, we also affirm the rejection of claims 2-9, 14--17, 25, and 26
under Rejections II-V.
SUMMARY
The Examiner's decision to reject claims 1, 10-13, 18-24, 27, and 28
under 35 U.S.C. § 102(e) as anticipated by Stevenson is affirmed.
The Examiner's decision to reject claims 25 and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Stevenson is affirmed.
The Examiner's decision to reject claims 2 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Stevenson and Bulkes is affirmed.
The Examiner's decision to reject claims 4--6 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Stevenson and Wang is affirmed.
The Examiner's decision to reject claims 7-9 and 14--16 under 35
U.S.C. § 103(a) as unpatentable over Stevenson and Yang 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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