Ex Parte Nelson et al

Patent Trial and Appeal Board

Aug 30, 2018

13795487 (P.T.A.B. Aug. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/795,487 03/12/2013
64619 7590 09/04/2018
MEDTRONIC, INC. (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
FIRST NAMED INVENTOR
Brian D. Nelson
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.
C00003053.USU1
(134.07200
CONFIRMATION NO.
7670
EXAMINER
MEDWAY,SCOTTJ
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
09/04/2018 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):
ptodocketing@mrgs.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAND. NELSON and JEFFREY P. BODNER
Appeal 2018-001120
Application 13/795,487
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Medtronic, Inc. ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-12, 37, and 38. See Appeal
Br. 2. Claims 13-21 have been withdrawn, and claims 22-36 have been
canceled. See id.; Amendment dated Nov. 23, 2015. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Medtronic, Inc. is the applicant, as provided in 37 C.F.R. § 1.46. The
Appeal Brief identifies Medtronic, Inc. and its parent entity, Medtronic plc
of Dublin, Ireland, as the real parties in interest. Appeal Br. 2.
Appeal 2018-001120
Application 13/795,487
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to medical devices. See, e.g.,
Spec. ,r 1. Claim 1, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal.
1. A sub-dermal anchor configured to secure a medical
device implanted via a portal formed in a mammalian body, the
anchor comprising:
a base configured to secure to tissue surrounding the
portal, the base comprising an upper side, lower side, outer
edge, and inner edge, the inner edge defining an opening
passing between the upper and lower sides, the opening
forming a socket; and
an elastomeric retention member comprising a spherical
surface, the retention member configured to be received within
the socket such that the retention member may rotate therein
about three mutually perpendicular axes, the retention member
defining a bore formed therethrough, the bore configured to
permit passage of the medical device through the base from the
upper side to the lower side; wherein the retention member is
positioned within the socket such that an uppermost surface of
the retention member is at an elevation below the upper side of
the base and the retention member is recessed into the portal;
wherein the sub-dermal anchor is adapted to be
implanted sub-dermally on the mammalian body.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Hennig
Chesbrough
Parmer
US 6,328,748 Bl
US 2004/0243146 Al
US 2004/0267284 Al
2
Dec. 11, 2001
Dec. 2, 2004
Dec. 30, 2004
Appeal 2018-001120
Application 13/795,487
REJECTIONS
The following rejections are before us for review: 2
I. Claims 1, 2, 4---6, 10, 37, and 38 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hennig. Final Act. 3-5.
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hennig and Parmer. Id. at 6.
III. Claims 7-9, 11, and 12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Hennig and Chesbrough. Id. at 6-7.
ANALYSIS
Rejection I- Claims 1, 2, 4-6, 10, 37, and 38 as unpatentable over Hennig
Claims 1. 2. 4-6. and 10
In rejecting independent claim 1, the Examiner found that Hennig
discloses, in relevant part, a "sub-dermal anchor ... adapted to be implanted
sub-dermally on the mammalian body (that is, the anchor is capable of
implantation sub-dermally, if only for a short period of time)." Final Act. 4.
The Examiner explains that Hennig' s device "is capable of performing the
intended use of 'adapted to be implanted sub-dermally' since the skin may
be merely moved back to its original location while the device is implanted."
Ans. 3; see also id. ( explaining that "the claimed recitation that the anchor is
'adapted to be implanted sub-dermally' recites a functional limitation that
does not impart any structure to the claim").
2 We note that a rejection of claim 37 under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn by the Examiner and thus
is not before us for review as part of the instant appeal. Ans. 2.
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Appeal 2018-001120
Application 13/795,487
Appellant argues that "the alleged anchor of [Hennig] is not adapted
to be sub-dermally implanted." Appeal Br. 6. In particular, Appellant
asserts that there is no "teaching or suggestion in [Hennig] that describes
that the device is adapted to remain under the skin, i.e., to remain sub-
dermally implanted after the withdrawn skin has been reattached." Id. at 7.
Appellant asserts that Hennig' s device "is removed such that electrodes and
other equipment can be sub-dermally implanted." Id. ( citing Hennig, col. 4,
11. 19--35); see also id. at 8 (asserting that Hennig's device "is intended to be
removed prior to sub dermal implantation of wires or other medical devices"
( citing Hennig, col. 4, 11. 40-53)). According to Appellant, "the Examiner
has failed to provide any teaching or suggestion in [Hennig] that describes
that the disclosed device is capable of being implanted sub[-]dermally." Id.
at 7. We are not persuaded by Appellant's argument.
Although Hennig may not explicitly disclose that the device is capable
of being implanted sub-dermally, the lack of an explicit disclosure of the
claimed function does not persuasively refute the Examiner's finding that
the structure of Hennig is nevertheless capable of performing this function
(i.e., being sub-dermally implanted). See Final Act. 4; Ans. 3. To the extent
that Hennig' s device may be intended to be removed after placing medical
equipment in a patient (see Hennig, col. 4, 11. 19--35, 40-53), Appellant does
not offer sufficient factual evidence or persuasive technical reasoning to
explain why the structure of Hennig' s device would be incapable of being
implanted sub-dermally. Moreover, Appellant does not identify, nor do we
discern, any disclosure in the Specification that would limit the structure of
an anchor that is "adapted to be implanted sub-dermally" in such a way that
would distinguish it from Hennig. In other words, we are not convinced of a
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Appeal 2018-001120
Application 13/795,487
meaningful distinction between the structure of Hennig' s device and the
"anchor ... adapted to be implanted sub-dermally" recited in claim 1.
After careful consideration of all the evidence, Appellant's arguments
do not apprise us of error in the Examiner's findings or reasoning in support
of the conclusion of obviousness. Accordingly, we sustain the rejection of
claim 1, and its dependent claims 2, 4---6, and 10, for which Appellant does
not present separate arguments (see Appeal Br. 9), under 35 U.S.C. § 103(a)
as being unpatentable over Hennig.
Claim 37
In contesting the rejection of claim 37, Appellant argues that "the
Examiner has failed to provide any teaching or suggestion in [Hennig] that
describes that the uppermost surface of the disclosed device is about 2-3 mm
from the skull." Appeal Br. 9. We are not persuaded by this argument
because it is not responsive to the rejection presented.
In rejecting claim 37, the Examiner acknowledged that Hennig does
not expressly disclose that the anchor extends about 2-3 mm from the
surface of the skull. See Final Act. 5. However, the Examiner determined
that "to modify the shape of the anchor to extend above an outer surface of
the skull at a distance of about 2-3 mm would have been obvious at the time
of the invention as a matter of a change in size or shape of the device." Id.;
see also id. ( explaining that "where the only difference between the prior art
and the claims was a recitation of relative dimensions of the claimed device
and a device having the claimed relative dimensions would not perform
differently than the prior art device, the claimed device was not patentably
distinct from the prior art device" ( citing Gardner v. TEC Sys., Inc., 725
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Appeal 2018-001120
Application 13/795,487
F.2d 1338 (Fed. Cir. 1984))). In this regard, Appellant does not specifically
address the Examiner's reasoning articulated in support of the proposed
modification of Hennig or explain why this reasoning is in error.
For the above reason, Appellant does not apprise us of error in the
Examiner's conclusion that the subject matter of claim 37 would have been
obvious. Accordingly, we sustain the rejection of claim 37 under 35 U.S.C.
§ 103(a) as being unpatentable over Hennig.
Claim 38
In rejecting claim 38, the Examiner found that Hennig discloses "a
single, unitary base 1/3 (Fig. 3a)." Final Act. 3. Appellant asserts that,
"[b ]ecause the lower and upper rings 1,3 [ of Hennig] are screwed together
after the ball has been placed on the lower ring 1, they cannot form a unitary
base as recited in claim 38." Appeal Br. 9. We agree that a sustainable case
of obviousness has not been established.
Here, the Examiner takes the position that Hennig' s "sub-dermal
anchor is unitary, in that the threaded combination forms a single or uniform
entity." Ans. 4. This position is unreasonable because it effectively reads
out any meaning imparted by the modifier "single, unitary," such that a base
formed of multiple parts could somehow be considered unitary simply
because it forms a uniform entity when the parts are fastened together. See
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
( denouncing claim constructions that render phrases in claims superfluous).
In other words, we agree with Appellant that a multi-part base does not
become a single, unitary base simply because the parts fasten together to
form a uniform structure.
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Application 13/795,487
In short, the Examiner's construction of "single, unitary base," as
recited in claim 3 8, is unreasonably broad, such that the rejection based upon
this claim construction is in error. In particular, the Examiner has not
established a finding supported by a preponderance of the evidence that
Hennig, as relied upon in the rejection presented, teaches or suggests the
disputed limitation. Also, the Examiner did not articulate any reason why it
might have been obvious to modify Hennig to include a single, unitary base.
See Final Act. 3--4.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that claim 3 8 is unpatentable. On
this basis, we do not sustain the rejection of claim 38 under 35 U.S.C.
§ 103(a) as being unpatentable over Hennig.
Rejections II and III - Claims 3, 7-9, 11, and 12 as unpatentable over
Hennig and one of Parmer and Chesbrough
With respect to the rejections of these claims, Appellant does not set
forth any additional substantive arguments separate from the arguments
discussed supra; instead adding only that each of Parmer and Chesbrough
does not cure the asserted deficiencies of Hennig, and otherwise relying on
dependency from independent claim 1. See Appeal Br. 10-11. Thus, for the
same reasons that Appellant's arguments do not apprise us of error in
Rejection I, Appellant also does not apprise us of error in Rejections II
and III. We likewise sustain the rejections of claims 3, 7-9, 11, and 12
under 35 U.S.C. § 103(a) as being unpatentable over Hennig and one of
Parmer and Chesbrough.
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Appeal 2018-001120
Application 13/795,487
DECISION
The Examiner's decision rejecting claims 1, 2, 4---6, 10, 37, and 38
under 35 U.S.C. § 103(a) as being unpatentable over Hennig is AFFIRMED
as to claims 1, 2, 4---6, 10, and 37, and is REVERSED as to claim 38.
The Examiner's decision rejecting claim 3 under 35 U.S.C. § 103(a)
as being unpatentable over Hennig and Parmer is AFFIRMED.
The Examiner's decision rejecting claims 7-9, 11, and 12 under
35 U.S.C. § 103(a) as being unpatentable over Hennig and Chesbrough 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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