Ex Parte Nygren

Patent Trial and Appeal Board

Mar 22, 2018

14657386 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/657,386 03/13/2015 Lea A. Nygren
10723 7590 03/26/2018
Medtronic Inc. (CRDM/MRG)
710 Medtronic Parkway NE
MS LC-340
Minneapolis, MN 55432-5604
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.
P0020735.USC1/13403500102 5409
EXAMINER
GRAND, JENNIFER LEIGH-STEW AR
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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
medtronic_crdm_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEA A. NYGREN 1
Appeal2017-005035
Application 14/657,386
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making an implantable electrode and an electrode made by that process,
which have been rejected for obviousness and obviousness-type double
patenting. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real parties in interest as Medtronic, Inc. and
Medtronic plc. (Appeal Br. 2.)
Appeal2017-005035
Application 14/657,386
STATEMENT OF THE CASE
Claims 29--51 are on appeal. Claims 29 and 38 are illustrative and
read as follows:
29. A method for fabricating an implantable medical
electrode, the method comprising:
mechanically roughening a surface of a substrate; and
applying a film of iridium oxide over the roughened
surface using direct current magnetron sputtering in a sputtering
atmosphere comprising oxygen and argon.
3 8. An implantable medical electrode comprising a substrate
and an iridium oxide surface, the surface formed by applying a
film of iridium oxide over a roughened surface of the substrate
using direct current magnetron sputtering in which a sputtering
atmosphere comprises oxygen and argon.
The claims stand rejected as follows:
Claims 29, 31, 35--41, and 44--51under35 U.S.C. § 103(a) as obvious
based on Zhou2 and Slavcheva3 (Ans. 2);
Claim 30 under 35 U.S.C. § 103(a) as obvious based on Zhou,
Slavcheva, and Hossainy4 (Ans. 6);
Claims 32, 33, 42, and 43 under 35 U.S.C. § 103(a) as obvious based
on Zhou, Slavcheva, and Moriya5 (Ans. 7);
2 US 2004/0220652 Al, published Nov. 4, 2004
3 E. Slavcheva, Sputtered Iridium Oxide Films as Charge Injection Material
for Functional Electrostimulation, 151 J. ELECTROCHEM. Soc. E226-E237
(2004).
4 US 2005/0238686 Al, Oct. 27, 2005.
5 US 2005/0057136 Al, Mar. 17, 2005.
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Application 14/657,386
Claim 34 under 35 U.S.C. § 103(a) as obvious based on Zhou,
Slavcheva, and Lessar6 (Ans. 7-8); and
Claim 29-51 for nonstatutory double patenting based on claims 1-27
of U.S. Patent 8,996, 129 (Ans. 9).
I
The Examiner has rejected all of the claims on appeal for nonstatutory
double patenting. (Ans. 9.) Appellant does not present any arguments in the
Appeal Brief or Reply Brief disputing the merits of the double patenting
rejection. We therefore summarily affirm the rejection of claims 29-51 for
nonstatutory double patenting based on claims 1-27 of the '129 patent.
II
The Examiner has rejected claims 2 9, 3 1, 3 5--41, and 44--51 as
obvious based on Zhou and Slavcheva. The Examiner finds that Zhou
teaches a method of making an electrode that includes "mechanically
roughening a surface of a substrate ... and applying a film of iridium oxide
over the roughened surface ... but does not explicitly teach do [sic, de]
magnetron sputtering in an oxygen and argon environment." Ans. 2. The
Examiner finds that "Slavcheva teaches sputtered iridium oxide films which
utilizes direct current magnetron sputtering in a sputtering atmosphere
comprising oxygen and argon to apply an iridium oxide film onto an
implantable electrode." Id. at 3. The Examiner concludes that it would have
been obvious "to modify the method of Zhou with the teachings of
Slavcheva to include using do [sic, de] magnetron sputtering in an
6 US 4,860,446, iss. Aug. 29, 1989
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Application 14/657,386
argon/oxygen atmosphere to apply the iridium oxide in order to provide a
thin film that has long term stability toward mechanical stress and corrosion
and which exhibits excellent electrochemical behavior," as disclosed by
Slavcheva. Id.
We agree with the Examiner that the method of claim 29 would have
been obvious based on the disclosures of Zhou and Slavcheva. Zhou
discloses "an implantable, coated electrode." Zhou i-f 23. Zhou also
discloses a "method for manufacturing the electrode wherein the electrode
has a fractal surface coating of platinum, known as 'platinum gray,' ...
[and] is coated with either a gradient or discrete coating of an inert material,
such as iridium oxide." Id. i-f 24. Zhou discloses that "the electrode surface
may, in an alternative embodiment, be a rough surface that is achieved on a
surface such as platinum, which has been roughened by abrasion, such as by
abrasion blasting or chemical etching." Id. i-f 35.
Zhou discloses that the iridium oxide coating can be applied by
electroplating or by sputtering. Id. i-fi-141, 57. In the sputtering embodiment,
"[t]he platinum and the iridium oxide are deposited by sequential graded co-
sputtering. . . . This method creates an electrode 24 or electrode array that
has platinum metal adjacent to the base of the electrode substrate, and
iridium oxide at the surface of the electrode 24." Id. i-f 57.
To achieve this sequential graded co-sputtering, the electrodes
are preferably placed on a rotating carousel 18 in a sputtering
machine that is capable of very rapid rotation and can sputter
from two targets simultaneously. One target is an RF target for
the sputtering of the iridium oxide. 20 An RF target is
necessary as opposed to a DC target, since iridium oxide is a
poor conductor.
Id.i-f59.
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Application 14/657,386
Slavcheva discloses "the deposition of iridium oxide thin films by de
reactive magnetron sputtering." Slavcheva, E226, Abstract. Slavcheva
states that an "optimal combination of sputtering parameters has been
established [ 40 standard cubic centimeters per minute (seem) argon/8-12
seem oxygen/40% effective pump power/100 W de power/'cold' sputtering]
that yields stable microporous amorphous films with a highly extended
surface." Id. (brackets in original). Slavcheva states that "[t]he
demonstrated remarkable electrochemical characteristics combined with
their established long-term mechanical stability and corrosion resistance
allow one to recommend the use of sputtered iridium oxide films as an ideal
electrode material for neural stimulation." Id.
Slavcheva also states that "de magnetron sputtering of iridium in
argon/oxygen plasma is a reliable method for production of SIROFs
[sputtered iridium oxide films] for neural stimulating electrodes. It can yield
reproducible thin iridium oxide layers with an extended microporous
surface." Id. at E236, left col. "In addition, these films have shown long-
term stability toward mechanical stresses and corrosion [and] constant low
impedance in the frequency range 1 Hz-10 kHz used for stimulation and
signal recording." Id.
We agree with the Examiner that the method of claim 29 would have
been obvious based on Zhou and Slavcheva. Zhou discloses implantable
electrodes having a surface roughened either mechanically or by deposition
of a layer of platinum gray, and coated with a layer of iridium oxide that is
deposited either by electroplating or by sputtering. Zhou specifically
discloses RF (radio frequency) sputtering of iridium oxide in order to create
on the surface of the electrode a gradient in which the proportion of platinum
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Application 14/657,386
gray decreases, and the proportion of iridium oxide increases, the closer one
gets to the surface.
However, Slavcheva discloses depositing iridium oxide thin films by
direct current (de) magnetron sputtering in a sputtering atmosphere
comprising oxygen and argon. Slavcheva discloses that the resulting films
have "remarkable electrochemical characteristics combined with ... long-
term mechanical stability and corrosion resistance" and, therefore, they are
"an ideal electrode material for neural stimulation." Slavcheva, E226,
Abstract. Thus, it would have been obvious to modify Zhou's method of
making implantable electrodes by substituting de magnetron sputtering of
iridium oxide in a sputtering atmosphere comprising oxygen and argon, as
taught by Slavcheva, for Zhou's sputtering process, because Slavcheva
teaches that the resulting iridium oxide films are an ideal electrode material
for neural stimulation.
Appellant argues that Zhou teaches away from using direct current
sputtering of iridium oxide. Appeal Br. 6-10. Appellant cites Zhou's
disclosure of a gradient coating embodiment, and its statement that "[a Jn RF
target is necessary as opposed to a DC target, since iridium oxide is a poor
conductor." Id. at 8, quoting Zhou i-f 59. Appellant argues that "Zhou et al.
teach only one technique for sputtering of iridium oxide - an RF target - and
Zhou et al. teach that an RF target is necessary for such sputtering." Id. at
9. Appellant concludes that "Zhou et al. teach away from using a direct
current target when sputtering iridium oxide." Id. at 10.
Appellant also argues that "including oxygen in the atmosphere
during sputtering, as taught by Slavcheva et al., would have prevented the
formation of the iridium oxide-platinum gradient intended by Zhou et al."
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Application 14/657,386
Id. at 11. See also id. at 12 ("Zhou et al. use an iridium oxide RF target in an
oxygen-free atmosphere. (Zhou et al. i-f 60 (describing an 'argon background
pressure of 1 to 10 mTorr').)"). Appellant argues that "providing oxygen to
react with an iridium target to form an oxide film in the system taught by
Zhou et al. would also have caused reaction with platinum to form platinum
oxide instead of pure platinum." Id.
These arguments are not persuasive, because they only address what
would have been suggested by Zhou when considered in isolation, and fail to
address what would have been obvious to a skilled artisan based on Zhou
and Slavcheva when considered together. "The test for obviousness is what
the combined teachings of the references would have suggested to one of
ordinary skill in the art." In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)
(emphasis added). "Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, although Zhou discloses that RF sputtering target is necessary
for iridium oxide when making an electrode with a gradient of platinum and
iridium oxide, and does not mention a sputtering atmosphere comprising
oxygen, Slavcheva expressly discloses that direct current (DC or de)
sputtering of iridium oxide in an atmosphere comprising argon and oxygen
provides "an ideal electrode material for neural stimulation." Slavcheva,
E226, Abstract. Thus, a skilled artisan who considered the disclosures of
Zhou and Slavcheva together would have known that direct current
sputtering of iridium oxide in an argon/oxygen atmosphere would provide an
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Application 14/657,386
iridium oxide film having suitable properties for use as an implantable
electrode.
Appellant also argues that the rejection is based on hindsight. Appeal
Br. 13-15. Appellant argues that "the Examiner failed to provide any reason
that would have directed a skilled artisan to make the various modifications
necessary to combine Zhou et al. and Slavcheva et al." Id. at 14.
This argument is also unpersuasive. The Examiner reasoned that it
would have been obvious
to modify the method of Zhou with the teachings of Slavcheva
to include using [de] magnetron sputtering in an argon/ oxygen
atmosphere to apply the iridium oxide in order to provide a thin
film that has long term stability toward mechanical stress and
corrosion and which exhibits excellent electrochemical
behavior (e.g. E236, 1st column, 3rd paragraph).
Ans. 3, emphasis added. Slavcheva's disclosure fully supports the
Examiner's rationale ("[T]hese films have shown long-term stability toward
mechanical stresses and corrosion [and] constant low impedance in the
frequency range 1 Hz-10 kHz used for stimulation and signal recording."
Slavcheva, E236, left col.).
The rationale relied on by the Examiner supports the rejection of
claim 29 under 35 U.S.C. § 103(a) based on Zhou and Slavcheva. See KSR
Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill."); id. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
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Application 14/657,386
We affirm the rejection of claim 29 under 35 U.S.C. § 103(a) based on
Zhou and Slavcheva. Claims 31, 3 5--41, and 44--51 have not been argued
separately and therefore fall with claim 29. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner has rejected claims 30, 32-34, 42, and 43 as obvious
based on Zhou and Slavcheva, combined with one of Hossainy, Moriya, or
Lessar. Ans. 6-8. Appellant has waived arguments directed to Hossainy,
Moriya, or Lessar. See Appeal Br. 15-16. We therefore affirm the rejection
of claims 30, 32-34, 42, and 43 under 35 U.S.C. § 103(a) based on Zhou and
Slavcheva, combined with one of Hossainy, Moriya, or Lessar. See 37
C.F.R. § 41.37(c)(l)(iv) (Appeal Brief must contain "[t]he arguments of
appellant with respect to each ground of rejection."); Hyatt v. Dudas, 551
F.3d 1307, 1314 (Fed. Cir. 2008) ("When the appellant fails to contest a
ground of rejection to the Board, ... the Board may treat any argument with
respect to that ground of rejection as waived.").
SUMMARY
We affirm all of the rejections on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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