Ex Parte O

Patent Trial and Appeal Board

Jan 31, 2013

10969397 (P.T.A.B. Jan. 31, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ROBERT C. O’BRIEN
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Appeal 2010-006274
Application 10/969,397
Technology Center 3700
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Before LINDA E. HORNER, BRADFORD E. KILE, and
ADAM V. FLOYD, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Robert C. O’Brien (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 4-8, 11-17, and 20-24.
Claims 2, 3, 9, 10, 18, 19, 26, and 27 are cancelled, and claims 25 and 28-32
are withdrawn from consideration. We have jurisdiction under 35 U.S.C.
§ 6(b).
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We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to implantable electrical lead
wires and to a solution to compatibility problems of lead wires with the
materials used to insulate them. Spec. 1. Claims 1, 8, and 17 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A deformable substrate, which comprises:
a) the substrate comprised of an alloy including at least
one of cobalt, molybdenum, and chromium;
b) an elastomeric material at least partially covering the
substrate; and
c) an intermediate coating of a carbonaceous material
provided on at least a portion of the substrate between the
substrate alloy and the elastomeric material, wherein the
carbonaceous material is coated on the substrate to a thickness
of about 10 nm to about 50 nm before completion of an island
coalescence phase with islands of the carbonaceous material
adhering to the alloy, but not to each other and wherein the
intermediate carbonaceous material prevents interaction of the
at least one of cobalt, molybdenum, and chromium of the
substrate alloy with the elastomeric material.
THE EVIDENCE
The Examiner relies upon the following evidence:
Lessar US 5,040,544 Aug. 20, 1991
Vallana US 5,084,151 Jan. 28, 1992
Cohen US 5,330,521 Jul. 19, 1994
Jalisi US 6,203,505 B1 Mar. 20, 2001
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THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1, 5-8, 12-17, and 21-24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lessar and Cohen.1
2. Claims 4, 11, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lessar, Cohen, and Vallana.
3. Claims 1, 5-8, 12-17, and 21-24 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lessar, Jalisi, and Cohen.2
4. Claims 4, 11, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lessar, Jalisi, and Vallana.
ISSUES
Appellant argues the claims subject to the first ground of rejection as a
group. App. Br. 15. We select claim 1 as representative, and claims 5-8,
12-17, and 21-24 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011). For the second ground of rejection based on Lessar, Cohen, and
Vallana, Appellant argues only that dependent claims 4, 11, and 20 “are
patentable as hinging from allowable base claims.” App. Br. 15. As such,
the outcome of our review of the first and second grounds of rejection turns
on our analysis of the rejection of claim 1 based on Lessar and Cohen.
With regard to the first ground of rejection, the Examiner determined
that Lessar discloses the substrate of claim 1 except for the intermediate

1 The Examiner mistakenly included canceled claims 3, 10, and 19 in this
ground of rejection. Ans. 3.
2 The Examiner mistakenly included canceled claims 3, 10, and 19 in this
ground of rejection. Ans. 6.
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coating being “of a carbonaceous material.” Ans. 3-5.3 The Examiner relied
on Cohen “to [show] that it was well known in the art to substitute one
conductive material, such as titanium, for another, such as carbon (e.g. Col.
6, line[s] 2-3).” Ans. 9-10. See also Ans. 5. The Examiner concluded that
it would have been obvious to replace the metallic inert material of Lessar
with the carbon coating material of Cohen at the same thickness of Lessar as
a simple substitution of one well known material for another. Ans. 5, 9-10.
Appellant argues that “given the different fundamental structures of
the two prior art leads, i.e., one built of conductors coiled in direct intimate
contact with each other, the other of ‘mutually isolated conductors’, one
skilled in the art wouldn’t have any reason to combine the teachings of these
two patents together.” App. Br. 13. Appellant further argues that Lessar’s
solution to use an inert metallic layer between the conductor and the
polyurethane coating functioned in an acceptable manner, and thus “there

3 The Examiner construed the limitation in claim 1 calling for the
intermediate coating to be coated on the substrate to a thickness of about
10 nm to about 50 nm “before completion of an island coalescence phase” to
be a product-by-process phrase that does not further limit the structure of the
substrate. Ans. 4. Appellant does not appear to challenge this claim
interpretation. See App. Br. 14-15 (agreeing with the Examiner’s
interpretation, and arguing that the claimed thickness range distinguishes
Appellant’s intermediate coating from the coating of Lessar, and the claimed
carbonaceous material distinguishes Appellant’s intermediate coating from
the coating of Cohen). These arguments are not convincing, because they
attack the references individually, rather than as combined by the Examiner.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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wouldn’t have been a need to substitute carbon for one of the noble metals
comprising its inert coating 34.” App. Br. 18. Appellant also posits that if
one of ordinary skill in the art were to substitute Cohen’s carbonaceous
intermediate layer for Lessar’s noble metal inert layer, one would have used
the increased thicknesses as disclosed in Cohen. App. Br. 19; Reply Br. 2.
The issue presented by this appeal is whether the claimed deformable
substrate comprising an intermediate coating of a carbonaceous material
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention in light of Lessar and Cohen.
PRINCIPLES OF LAW
“When a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (citing United States v.
Adams, 383 U.S. 39, 50-51 (1966)).
ANALYSIS
We agree with the Examiner that Cohen shows by a preponderance of
the evidence that it was well known in the art of implantable electrical leads
at the time of Appellant’s invention to use carbon as an alternative material
in place of a noble metal, such as platinum, for an intermediate layer
between a wire conductor substrate and an elastomeric covering. Ans. 5;
Cohen, col. 3, ll. 15-25, col. 5, ll. 32-41, and col. 6, ll. 2-5. The Examiner
found (Ans. 5) and Appellant does not dispute that carbon is an inert
material. As such, we find reasonable the Examiner’s view that one of
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ordinary skill in the art would have predicted that an intermediate layer
made of carbon would prevent oxidation degradation of the insulative
flexible polymer sheath caused by contact with the conventional core
material in the same manner as the platinum layer of Lessar. We further find
reasonable the Examiner’s view that one of ordinary skill in the art would
have been led by the teachings of Lessar to use the thickness of the coating
as disclosed in Lessar. Ans. 9-10. For example, Lessar teaches that
extremely thin coatings are advantageous because they do not alter the
mechanical characteristics of the basic materials used in lead conductor
wires. Lessar, col. 2, ll. 11-24. Based on this teaching, we are not
persuaded by Appellant that one of ordinary skill in the art would have been
led to use the relatively thicker intermediate coating of Cohen in the
electrical lead of Lessar.
To the extent Appellant’s arguments are directed to a proposed
modification of Cohen to use a carbon coating having the reduced thickness
disclosed in Lessar (see, e.g., App. Br. 13), such arguments are not
responsive to the Examiner’s rejection, which proposes modifying the lead
of Lessar with the teaching of Cohen. For these reasons, we affirm the
rejection of claims 1, 5-8, 12-17, and 21-24 under 35 U.S.C. § 103(a) as
being unpatentable over Lessar and Cohen. We likewise affirm the rejection
of claims 4, 11, and 20 as unpatentable over Lessar, Cohn, and Vallana for
the same reasons provided supra in our analysis of claim 1.
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As our affirmance of the first two grounds of rejection is dispositive
as to all the claims on appeal, we need not reach the third and fourth grounds
of rejection.
CONCLUSION
The claimed deformable substrate comprising an intermediate coating
of a carbonaceous material would have been obvious to one of ordinary skill
in the art at the time of Appellant’s invention in light of Lessar and Cohen.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1, 4-8, 11-
17, and 20-24.
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)(1)(iv).

AFFIRMED

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