Ex Parte Rahman

Board of Patent Appeals and Interferences

Dec 4, 2008

10615081 (B.P.A.I. Dec. 4, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte M. MIZANUR RAHMAN
____________

Appeal 2008-5122
Application 10/615,081
Technology Center 2800
____________

Decided: December 4, 2008
____________

Before PETER F. KRATZ, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-12, 22-30, and 32-38. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM-IN-PART.

Appeal 2008-5122
Application 10/615,081

Appellant claims an implantable medical device with a folded
monopole radio frequency (RF) antenna.
Representative claims 1, 22, 24, and 33 read as follows (italics added
to highlight limitations in dispute):
1. An RF telemetry antenna system for communications between
an external programmer and a implantable medical device, said system
comprising:
an implantable medical device housing including a conductive,
metal housing portion defining an internal volume and a dielectric housing
portion defining an internal volume;
an internal transmitter/receiver circuit having a ground
reference located within the metal housing portion that is connected to the
metal housing portion such that the metal housing portion acts as a ground
plane;
wherein the monopole RF antenna has an elongate form which
is folded at least once and conformed inside the internal volume defined by
the dielectric housing portion, and
wherein the connection end of the antenna is connected to the
internal transmitter/receiver circuit.

22. An implantable medical device, comprising:
a housing having a dielectric portion defining an internal
volume and a metal portion defining an internal volume;
a transmitter/receiver circuit located within the housing; and
an elongate monopole RF antenna, with a connection end, a
free end and at least one fold between the connection end and the free end,
operably connected to the transmitter/receiver circuit and positioned entirely
within the dielectric portion internal volume such that the free end is closer
to the connection end than the at least one fold.

24. An implantable medical device, comprising;
a housing having a dielectric portion, defining an internal
volume and including a curved region, and a metal portion defining an
internal volume;
a transmitter/receiver circuit located within the housing; and
an elongate monopole RF antenna, with at least one fold and
first and second arcuate portions that extend along the curved region in first
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and second planes that are substantially parallel to one another, operably
connected to the transmitter/receiver circuit and positioned entirely within
the dielectric portion internal volume.

33. An implantable medical device, comprising:
a housing having a dielectric portion defining an internal
volume and a metal portion defining an internal volume;
a transmitter/receiver circuit, located within the housing,
including a ground reference connected to the metal portion of the housing;
a tissue stimulation circuit located within the housing; and
an elongate antenna with at least one folded portion operably
connected to the transmitter/receiver circuit and positioned within the
dielectric portion such that transmissions from the at least one folded
portion are receivable outside the dielectric portion.

The prior art set forth below is applied by the Examiner in the § 103
rejections before us as evidence of unpatentability:
Villaseca 6,240,317 B1 May 29, 2001
Amundson 6,456,256 B1 Sep. 24, 2002

Claims 1-12, 22-28, 30, and 32-38 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Villaseca.
Claim 29 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Villaseca and Amundson.
Within the first ground of rejection, Appellant has separately argued
each independent claim 1, 22, 24, and 33. Appellant has not separately
argued any dependent claims with any reasonable degree of specificity. (Br.
8-13). Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we select
claims 1, 22, 24 and 33 as representative for this ground of rejection.
Appellant presents no additional arguments, to those presented for the first
ground of rejection, for the second ground of rejection of claim 29 which
depends from independent claim 22.
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ISSUES
The Examiner relies on Villaseca to teach or suggest all the
elements in each of the four independent claims. Appellant contends that the
respective disputed claim language (shown in italics above) of each of
independent claims 1, 22, 24, and 33 is not taught or suggested by Villaseca.
Thus, the issues on appeal are:
Issue 1: Has Appellant shown that the Examiner reversibly erred in
finding that “a ground reference located within the metal housing portion
that is connected to the metal housing portion” as recited in claim 1 would
have been “good engineering practice” to one of ordinary skill in the art?
Issue 2: Has Appellant shown that the Examiner reversibly erred in
concluding that the particular geometry of the antenna as recited in claim 22
would have been obvious to one of ordinary skill in the art?
Issue 3: Has Appellant shown that the Examiner reversibly erred in
finding that the particular geometry of the antenna as recited in claim 24 is
met by the shape of the antenna including the braided shield 124 of
Villaseca?
Issue 4: Has Appellant shown that the Examiner reversibly erred in
finding that the particular positioning of the antenna of Villaseca is “such
that transmissions from the at least one folded portion are receivable outside
the dielectric portion” as recited in claim 33?
We answer these questions in the negative for issue 1 (claim 1), but in
the affirmative for issues 2-4 (claims 22, 24, and 33).

FINDINGS OF FACT
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The following findings of fact are supported by a preponderance of
the evidence. Additional findings of fact as necessary appear in the Analysis
portion of the opinion.
1. Villaseca describes a RF telemetry antenna system for
communication between an external programmer and an implantable
medical device (see, e.g., Abstract).
2. Villaseca’s implantable medical device 120 has a housing portion
122 made of metal such as titanium, with a dielectric housing portion 138;
each portion defines an internal volume (Fig. 7; col. 9, ll. 15-47)
3. Villaseca describes a self-resonating, monopole antenna 134/136
contained within the internal volume of the housing defined by the dielectric
portion 138. The antenna has an elongate form, with a free end and a
connection end 126, folded at least once, which conforms inside of the
housing portion 138 (Fig. 7; col. 9, ll. 15-47).
4. The antenna may take the form of a coaxial cable (e.g., col. 2, ll.
36-46; col. 9, ll. 37-41).
5. Appellant does not dispute the Examiner’s finding that the
connection end 126 has the shield 124 of the antenna connected to the
conductive housing 122 defining a ground reference forming a ground plane
as claimed.1
6. The Examiner concludes that the skilled artisan would have found it
obvious that the internal transceiver circuit is grounded to the housing, at
least through the shield of the coaxial cable (Ans. 3).

1 No Reply Brief was filed in response to the Examiner’s Answer.
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7. The definition of “ground” includes “a conducting connection
between an electric circuit or equipment and the earth or some other
conducting body”.2
8. Appellant does not dispute the Examiner’s finding that “[i]t is
known that there are two conductors between the antenna and transceiver.
In this case there are coaxial conductors defining the feed line. A center
conductor would be connected to the transceiver circuitry and the shield
conductor is connected to the ground of the transceiver, as in a ground
conductor etched on the printed circuit board of a transceiver.” (Ans. 3-4).
9. Appellant also does not dispute the Examiner’s implicit finding that
it was known in the art to have an internal ground in an implantable medical
device; that is, Appellant did not dispute the Examiner’s finding that “[i]n
either case the connection [of the braided conductor shield of Villaseca to
ground] is within the housing, either at the feed through or inside the
housing near the transceiver circuitry. Such a ground connection would
never be avoided, as recognized by the skilled artisan because of the
required two conductor feed line from transceiver ground and circuitry.”
(Ans. 4).
PRINCIPLES OF LAW
The Examiner bears the initial burden, on review of prior art or on any
other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

2 "ground." Dictionary.com Unabridged (v 1.1). Random House, Inc.
Dictionary.com http://dictionary.reference.com/browse/ground; see also,
The Random House College Dictionary 583 (1973).

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A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. 35 U.S.C. § 103(a); KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere Co., 383 U.S. 1, 17-18 (1966).
It is a basic principle that the question under 35 U.S.C. § 103 is not
merely what the references expressly teach but what they would have
suggested to one of ordinary skill in the art at the time the invention was
made. See Merck & Co. Inc., v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989).
Nor is it necessary that suggestion or motivation be found within the
four corners of the references themselves. “The obviousness analysis cannot
be confined by the formalistic conception of the words teaching, suggestion
and motivation, or by overemphasis on the importance of . . . the explicit
content of issued patents.” KSR, 127 S. Ct. at 1741. The Supreme Court
also noted in KSR that an obviousness analysis “need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” Id.
Consistent with KSR, the Federal Circuit recently recognized that
“[a]n obviousness determination is not the result of a rigid formula
disassociated from the consideration of the facts of a case. Indeed, the
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common sense of those skilled in the art demonstrates why some
combinations would have been obvious where others would not.” Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (citing KSR, 127 S.
Ct. 1727, 1739 (2007)). The Federal Circuit relied in part on the fact that
Leapfrog had presented no evidence that the inclusion of a reader in the
combined device was “uniquely challenging or difficult for one of ordinary
skill in the art” or “represented an unobvious step over the prior art.” Id. at
1162.
ANALYSIS
Issue 1
Claims 1-12 and 30
It is undisputed that Villaseca describes a system as set out in claim 1
except that Villaseca does not explicitly describe that the internal circuit of
the implantable medical device has “a ground reference located within the
metal housing portion that is connected to the metal housing portion” as
recited in claim 1. The Examiner addresses this deficiency by finding that it
is only “good engineering practice” to provide a ground for the internal
circuitry and that it therefore would have been within the level of ordinary
skill in the art to provide an internal ground reference as claimed (Ans. 3, 8).
Appellant contends that the Examiner’s rejection is “devoid of any
support” for the assertion that one would have been motivated to connect an
internal ground to the housing of Villaseca’s implantable medical device
(Br. 8), and is based on nothing more than “mere conclusory statements”
(Br. 10).
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We do not agree. The Examiner has made numerous findings in
support of the obviousness conclusion that are undisputed by the Appellant.3
(Ans. 3, 4, 6-8). Specifically, for example only, the Examiner found it was
no more than “good engineering practice” to provide a ground for the
internal circuit of Villaseca (Ans. 8). The Examiner found that the
connection of the braided shield 124 to the housing 122 provides a ground
(Ans. 3). The Examiner also found that since the coaxial cable antenna
shield passes through the connection 126, “then there is an internally
connected ground reference within the metal housing” as claimed (Ans. 7,
see also Ans. 8 ("[t]he internal ground reference is the continuation of the
shield within the housing and connecting the ground of the transceiver.”)).
Furthermore, as the Supreme Court recently stated, a person of
ordinary skill is also a person of ordinary creativity, not an automaton. KSR,
127 S. Ct. at 1742. One of ordinary skill in the art is presumed to have skills
apart from what the prior art references expressly disclose. See In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985).
We have no doubt that one of ordinary skill in the art would have
readily appreciated that providing an internal ground reference as claimed
would have been prima facie obvious to one of ordinary skill in the art as
“good engineering practice” as established by the Examiner. The
improvement of providing an internal ground reference as claimed appears
to be no more than the predictable use of a way to accomplish the known
established function of grounding an electrical circuit. KSR, 127 S. Ct. at
1740. Appellant has not contended that it would take more than ordinary

3 As previously noted, no Reply Brief was filed by Appellant.
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creativity to provide an internal ground reference as claimed. See, e.g.,
Leapfrog, 485 F.3d at 1162.
We therefore determine that Appellant has not shown that the
Examiner erred in establishing a prima face case of obviousness for claim 1.
Since dependent claims 2-12 and 30 were not separately argued, they fall
with independent claim 1.

Issue 2
Claims 22, 23, 25-29 and 32
The geometry of the antenna recited in independent claim 22 is not
explicitly shown in Villaseca; that is, it is undisputed that Villaseca does not
specifically show the free end of the antenna closer to the connection end
than the fold as recited in claim 22.
The Examiner’s position is that a skilled artisan would have found it
obvious to extend the free end of the antenna around the housing in the same
manner as the first fold so that the free end of the antenna closer to the
connection end, particularly when a lower frequency is employed. The
Examiner contends that evidence of obviousness, for changing antenna
length, arrangement and geometry, lies within the various embodiments of
Villaseca (Ans. 9).
Appellant contends that the Examiner has not provided any reasoning
why one of ordinary skill in the art would have been led to the particular
configuration recited in claim 22 (Br. 9-10).
The fundamental deficiency of the Examiner’s reasoning is that the
Examiner has not clearly articulated any reason why an artisan would have
made such a modification to the antenna which already is contained within
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the dielectric housing portion 138 of Villaseca (Fig. 7). All other
embodiments of Villaseca show antennas that are not configured as claimed,
nor contained within the dielectric portion of the housing as required by
Appellant’s claim 22.
Nor is there any evidence or rationale provided by the Examiner that
the claimed relationship would not necessarily result in differences in
performance over the prior art product. Indeed, the Examiner states that the
radiation beam pattern, impedance match, and other characteristics of the
antenna would change (Ans. 4-5).
The additional reference of Amundson for the rejection of dependent
claim 29 does not cure the deficiencies of Villaseca.
We, therefore, determine that the evidence presented by the Examiner
falls short of supporting a prima facie case of obviousness. We are
constrained by these circumstances to reverse the § 103 rejection of claims
22, 23, 25-28 and 32, as well as the § 103 rejection of dependent claim 29.
Issue 3
Claim 24
The geometry of the antenna as recited in independent claim 24 is not
explicitly shown in Villaseca.
Claim 24 requires an “antenna, with at least one fold and first and
second arcuate portions that extend along the curved region” of the housing
“in first and second planes that are substantially parallel to one another”.
It is well established that the scope of the claims in patent applications
is interpreted not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
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it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The Examiner’s position is that the braided shield 124 reads on the
claimed first arcuate portion and the center antenna conductor 134 reads on
the claimed second arcuate portion (Ans. 10). Appellant argues this is an
unreasonable interpretation of the disputed claimed language (Br. 10, 11).
We find that reading the configuration of Villaseca’s antenna on the
recited claim language is unreasonably broad, as it is not consistent with
Appellant’s Specification, nor is it consistent with the interpretation that
those skilled in the art would reach. As can be readily seen in Appellant’s
Figs. 1, 4 and 5, the antenna itself has a fold and first and second arcuate
portions in first and second planes that are substantially parallel to one
another (see, e.g., Spec. 9, ¶ [0038]). It is unreasonable to read the braided
shield of Villaseca as one portion of the antenna and the center conductor
(i.e., the antenna per se) as another portion of the antenna as the Examiner
has done.
We therefore agree with Appellants that Villaseca does not teach or
suggest an antenna as recited in claim 24, and that the Examiner has not
provided any evidence of why such a configuration would have been prima
facie obvious to one of ordinary skill in the art.
We, therefore, determine that the evidence presented by the Examiner
falls short of supporting a prima facie case of obviousness. We are
constrained by these circumstances to reverse the § 103 rejection of claim
24.
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Issue 4
Claims 33-38
Appellant’s arguments regarding “the ground reference connected to
the metal portion of the housing” are unpersuasive for the same reasons we
have set forth with respect to claim 1 above.
Appellant further contends that the antenna of Villaseca is not
positioned “such that transmissions from the at least one folded portion are
receivable outside the dielectric portion” of the housing as recited in
independent claim 33 (Br. 13).
It is undisputed that the folded portion of the antenna of Villaseca is
covered with a braided shield 124. As recognized by the Examiner, the
shield 124 of Villaseca would shield the antenna (and its transmissions)
along its length (Ans. 12). Notwithstanding this, however, the Examiner’s
position is that the shield 124 would “not prevent radiating currents from
flowing thereon in opposite directions” along the inner conductor (i.e., the
antenna) (Ans. 12).
Appellant contends that the purpose of the braided shield is to
prevent electromagnetic energy from escaping the folded portion (Br. 13).
The Examiner’s assertion that current would flow below the braided
shield in opposite directions such that transmissions from the folded portion
covered by the braid 124 would be receivable as claimed appears to be mere
speculation unsupported by any evidence or convincing line of technical
reasoning.
We, therefore, determine that the evidence presented by the Examiner
falls short of supporting a prima facie case of obviousness. We are
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constrained by these circumstances to reverse the § 103 rejection of claims
33-38.
CONCLUSIONS
Appellant has not shown that the Examiner reversibly erred in finding
that “a ground reference located within the metal housing portion that is
connected to the metal housing portion” as recited in claim 1 would have
been “good engineering practice” to one of ordinary skill in the art.
Appellant has shown that the Examiner erred in determining that
claims 22, 24 and 33 were obvious over Villaseca, specifically;
Appellant has shown that the Examiner reversibly erred by not
establishing with sufficient evidence that the particular geometry of the
antenna as recited in claim 22 would have been obvious to one of ordinary
skill in the art,
Appellant has shown that the Examiner reversibly erred in finding that
the particular geometry of the antenna as recited in claim 24 is met by the
shape of the antenna including the braided shield 124 of Villaseca, and,
Appellant has shown that the Examiner reversibly erred by not
establishing with sufficient evidence that the particular positioning of the
antenna of Villaseca is “such that transmissions from the at least one folded
portion are receivable outside the dielectric portion” as recited in claim 33.

ORDER
The rejection of claims 1-12, and 30 under 35 U.S.C. § 103(a) as
being unpatentable over Villaseca is affirmed.
The rejection of claims 22-28, and 32-38 under 35 U.S.C. § 103(a) as
being unpatentable over Villaseca is reversed.
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The rejection of claim 29 under 35 U.S.C. § 103(a) as being
unpatentable over Villaseca and Amundson is reversed.
The decision of the Examiner is affirmed-in-part.

AFFIRMED-IN-PART

tc

WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI L.L.P.
20333 SH 249
SUITE 600
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