Ex Parte Nguyen-Stella et al

Patent Trial and Appeal Board

Aug 22, 2017

12430304 (P.T.A.B. Aug. 22, 2017)

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.
BSNC-l-165.0 2896
EXAMINER
BAYS, PAMELA M
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
12/430,304 04/27/2009
50638 7590 08/22/2017
Boston Scientific Neuromodulation Corp.
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Quynh Nguyen-Stella
08/22/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte QUYNH NGUYEN-STELLA,
KENNY KINYEN CHINN, JOHN MICHAEL BARKER,
SUREKHA B. HUSMANN, and ROGER CHEN
Appeal 2016-000003
Application 12/430,3041
Technology Center 3700
Before PHILIP J. HOFFMANN, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1, 2, 4, 6—9, 11—16, and 18—20. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 “The real party in interest for this appeal is Boston Scientific
Neuromodulation Corporation. Boston Scientific Neuromodulation
Corporation, the assignee of the present patent application, is a wholly-
owned subsidiary of Boston Scientific Corporation.” Appeal Br. 2.
Appeal 2016-000003
Application 12/430,304
ILLUSTRATIVE CLAIM
1. A lead anchor, comprising:
a body defining a lead lumen and having a first opening
and a second opening through which a lead can pass through
the body and extend beyond the first and second openings
outside the body, wherein the first and second openings of the
body are located at opposing ends of the body such that the
body is configured and arranged to slide along the lead to a
selected anchoring position on the lead, the body further
defining a transverse lumen that intersects the lead lumen;
a separate exterior member disposed around at least a
portion of the body, the exterior member being formed of a
biocompatible material, wherein the transverse lumen is
accessible through a transverse opening in the exterior member,
wherein the exterior member further defines the lead lumen and
has a first opening and a second opening through which the lead
can pass through the exterior member, wherein the first and
second openings of the exterior member are located at opposing
ends of the exterior member, wherein the first and second
openings of the body are both disposed between the first
opening of the exterior member and the second opening of the
exterior member;
a fastener for anchoring the lead to the body through the
transverse lumen by engaging a portion of the lead, wherein the
transverse lumen is configured and arranged to receive the
fastener; and
at least one suture element defined by the exterior
member and configured and arranged for receiving a suture to
suture the lead anchor to patient tissue.
CITED REFERENCES
The Examiner relies upon the following references:
Stutz US 4,764,132
US 5,036,862
US 6,473,654 B1
Aug. 16, 1988
Aug. 6, 1991
Oct. 29, 2002
Pohndorf
Chinn
2
Appeal 2016-000003
Application 12/430,304
Lubenow et al. US 2008/0196939 A1 Aug. 21, 2008
(hereinafter “Lubenow”)
REJECTIONS
I. Claims 1, 2, 4, 6—9, 11—16, and 18—20 are provisionally rejected
on the ground of nonstatutory double patenting as being unpatentable over
claims 1—20 of copending Application No. 13/022,415.
II. Claims 1, 2, 4, 6—8, 11—16, 19, and 20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Chinn and Pohndorf.
III. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Chinn, Pohndorf, and Lubenow.
IV. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Chinn, Pohndorf, and Stutz.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Provisional Double-Patenting Rejection
The Appellants intend to file a terminal disclaimer, if one is required,
in order to obviate a double-patenting rejection. Appeal Br. 6. Pursuant to
the Appellants’ position, the Answer indicates that this rejection is presently
being held in abeyance. Answer 9. Under these circumstances, the present
Decision declines to reach the merits of the provisional double-patenting
rejection of claims 1, 2, 4, 6—9, 11—16, and 18—20. See Ex parte Moncla,
95 USPQ2d 1884, 1885 (BPAI June 22, 2010) (precedential).
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Appeal 2016-000003
Application 12/430,304
Obviousness Rejection
The Appellants argue that the Examiner erred in rejecting independent
claim 1, because the cited Chinn and Pohndorf references do not teach or
suggest the recited “lead anchor,” “wherein the first and second openings of
the body are both disposed between the first opening of the exterior member
and the second opening of the exterior member.” Appeal Br. 7—9; Reply
Br. 4-8.
The Examiner maintains that, even though neither Chinn nor Pohndorf
discloses the identified feature of claim 1, the identified feature of claim 1
amounts to an obvious modification of either reference, because it would
have involved merely changing the size of the “exterior member,” so as to
cover both “openings” of the “body” — a modification (i.e., a change in
size) that is generally recognized as being within the level of ordinary skill
in the art. Answer 11—12 (citing In re Rose, 220 F.2d 459 (CCPA 1955)).
Yet, the proposed modification — although characterized as changing
the size of a component — would alter the interaction among multiple
components and, as the Appellants point out, present obstacles not addressed
in the rejection. For example, “[i]t is unclear how one of skill in the art
would rotate [Chinn’s] inner sleeve 70 and outer sleeve 40 relative to each
other ... to lock the lead in place if the outer sleeve 40 covers the inner
sleeve 70.” Appeal Br. 9; see also Reply Br. 6. In Pohndorf s device, two
separate components — corresponding to the “body” and the “exterior
member” of claim 1 — mate together, in order to form the anchor; yet, the
rejection does not explain how such an operation might be accomplished if
the “exterior member” were to envelop the “body.” See Reply Br. 8.
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Appeal 2016-000003
Application 12/430,304
In addition, exclusive reliance on per se rules for determining
obviousness is generally disfavored. In re Ochiai, 71 F.3d 1565, 1571—72
(Fed. Cir. 1995); In re Eli Lilly & Co., 902 F.2d 943, 947-A8 (Fed. Cir.
1990) (“The uniform application of the law of ‘obviousness’ is essential to
the commercial incentive that is the core of the patent system. The
obligation of the decisionmaker is to apply the law consistently to the
evidence for each new invention. All relevant facts must be considered,
while recognizing that it is inappropriate to ‘squeez[e] new factual situations
into preestablished pigeonholes.’”) (citing In re Yates, 663 F.2d 1054, 1056
n.4 (CCPA 1981)); MPEP §§ 2116.01, 2144.
Accordingly, we do not sustain the rejection of independent claim 1
— or the rejections of its dependent claims 2, 4, 6—9, 11—16, and 18—20 —
under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4, 6—9,
11-16, and 18-20 under 35 U.S.C. § 103(a).
REVERSED
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