Ex Parte Rugnetta et al

Board of Patent Appeals and Interferences

Jul 10, 2008

10670985 (B.P.A.I. Jul. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte
JAIME L. RUGNETTA, MARY S. WENTORF, GREGORY R. LEY,
CHRISTOPHER M. ZERBY, LYLE A. BYE, PAUL E. ZAREMBO,
BRIAN D. SOLTIS, and JEFFREY T. BARTIG
__________

Appeal 2008-1771
Application 10/670,985
Technology Center 3700
__________

Decided: July 10, 2008
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a lead
assembly for use in implantation of electrodes. We have jurisdiction under
35 U.S.C. § 6(b). We affirm in part.

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Background
“[E]lectrodes implanted in or about the heart have been used to reverse certain
life threatening arrhythmias, or to stimulate contraction of the heart, where electrical
energy is applied to the heart via the electrodes to return the heart to normal rhythm”
(Spec. 2). The Specification comments that “electrodes are often fixated within
passages or within chambers of the heart through use of one or more tines which
extend from the lead body” (Spec. 2).
Statement of the Case
The Claims
Claims 1-20 are on appeal. We will focus on claims 1, 2, 3, 4, 7, and 8 which
are representative and read as follows:

1. A lead assembly comprising:
a lead body extending from a lead proximal end to a lead distal
end and having an intermediate portion therebetween, the lead body
including a tine interface section;
at least one tine coupled with the lead body at a tine coupling
portion, each at least one tine having a top surface and a bottom
surface, the at least one tine having a first position extended away
from the lead body, the at least one tine having a second collapsed
position;
at least one first recessed portion formed on the lead body at a
first longitudinal location along the tine interface section of the lead
body;
at least one second recessed portion formed on the lead body at
a second longitudinal location along the tine interface section of the
lead body;
the at least one first recessed portion longitudinally disposed
between the tine coupling portion and the at least one second recessed
portion; and
wherein the at least one first recessed portion is recessed away
from the bottom surface of the at least one tine when the at least one
tine is disposed in the second collapsed position.
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2. The lead assembly as recited in claim 1, wherein the at least one
first recessed portion extends only a portion around a perimeter of the
lead body.

3. The lead assembly as recited in claim 1, wherein the lead body
has a first cross-sectional area at the at least one first recessed portion,
and the lead body has a second cross-sectional area at the at least one
second recessed portion, and the first cross-sectional area is smaller
than the second cross-sectional area.

4. The lead assembly as recited in claim 1, wherein the lead body
has a first cross-sectional area at the tine interface section, and the
lead body has a second cross-sectional area at a second area between
the at least one tine and the lead distal end, and the first cross-
sectional area is less than 10% smaller than the second cross-sectional
area.

7. The lead assembly as recited in claim 1, wherein the
intermediate portion of the lead body has a first cross-section, the first
recessed portion has a second cross-section, and the second recessed
portion has a third cross-section, and the first cross-section, the second
cross-section, and the third cross-section are each different from one
another.

8. A lead assembly comprising:
a lead body extending from a lead proximal end to a lead distal
end and having an intermediate portion therebetween, the lead body
having a tine interface section;
at least one tine coupled with the lead body at a tine coupling
portion, each at least one tine having a top surface and a bottom
surface, the at least one tine having a first position extended away
from the lead body, the at least one tine having a second collapsed
position;
at least one first portion formed on the lead body at a first
location along the tine interface section of the lead body, the at least
one first portion having a first cross-sectional shape;
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at least one second portion formed on the lead body at a second
location along the tine interface section of the lead body, the at least
one second portion having a second cross-sectional shape;
the first cross-sectional shape is different than the second cross-
sectional shape; and
the at least one first portion longitudinally disposed between the
tine coupling portion and the at least one second portion.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Huepenbecker U.S. 6,289,251 Sep. 11, 2001
Laske U.S. 5,807,399 Sep. 15, 1998
Alferness U.S. 5,531,781 Jul. 2, 1996

The issues
The rejections as presented by the Examiner are as follows:
A. Claims 1, 3-4, 6-10, 12, 14-16, and 19-20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Huepenbecker (Ans. 3).
B. Claims 1, 3-4, 6-10, 12, 14-16, and 19-20 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Laske (Ans. 5).
C. Claims 2, 5, 11, 13, and 17-18 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Huepenbecker and Alferness (Ans. 7).
D. Claims 2, 5, 11, and 17 stand rejected under 35 U.S.C. § 103(a) as being
obvious over Laske (Ans. 8).
E. Claims 13 and 18 stand rejected under 35 U.S.C. § 103(a) as being obvious over
Laske and Alferness (Ans. 9).
A. 35 U.S.C. § 102(b) rejection over Huepenbecker
Appellants argue that they
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cannot find in Huepenbecker et al. a recessed portion recessed away
from the bottom surface of the tine when the tine is disposed in the
second collapsed position, as recited in claims 1 and 14, or forming a
first recessed portion along the lead body along the tine interface
portion including recessing the first recessed portion away from the
bottom surface when the one or more tines are disposed in the second
collapsed position, as recited in claim 15. Appellant further cannot
find in the reference the first portion along the tine interface second
having a first cross-sectional shape that is different than a second
cross-sectional shape, as recited in claim 8.

(App. Br. 12.) Appellants contend that they “cannot find in Huepenbecker et al. or
any of the cited references discussion related to the tines being recessed away from a
first recessed portion. Appellant respectfully submits that Huepenbecker et al. does
not enable such statements” (App. Br. 13).
The Examiner responds that “[a]lthough not explicitly stated in Huenpenbecker,
[sic] passive tines such as the ones illustrated in Huenpenbecker [sic] are necessarily
are formed of a flexible material such that the tines fold/collapse against the lead body
during insertion into the patient” (Ans. 13). The Examiner argues that “[i]n order to
implant the lead distal end at the heart such that it can provide the desired pacing or
defibrillation therapy, the tines necessarily must fold down/collapse against the lead
body such that the lead can be tracked through a patient's vasculature system to the
implantation site” (Ans. 14).
The Examiner also contends that “[s]ince cross-sectional area is a direct
function of diameter size, Examiner maintains that the cross-sectional area of the first
recessed portion must necessarily be smaller than the cross-sectional area of the
second recessed portion” (Ans. 14).
The Examiner also argues that “[s]ince the axial view of Figure 4 shows the
diameter of the first recessed portion to be smaller than the diameter of the second
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recessed portion, Examiner considers the cross-sectional area of the first recessed
portion to be different from the second cross-sectional shape” (Ans. 15).
In view of these conflicting positions, we frame the anticipation issue before us
as follows:
Does the lead assembly of Huepenbecker satisfy the limitations of claims 1, 3,
4, 7, and 8?
Findings of Fact
1. Huepenbecker teaches that a “lead is provided with an elongated
insulative lead body 10, which terminates at its proximal extremity in a molded
bifurcation member 12” (Huepenbecker, col. 2, ll. 36-38).
2. Huepenbecker teaches that the “lead is optionally provided with tines 40
to assist in acute fixation of the electrode 38 in the right ventricular apex”
(Huepenbecker, col. 2, ll. 57-59).
3. Huepenbecker discloses that the lead body has first and second recessed
portions as shown by Figure 4 of Huepenbecker as annotated by the Examiner shown
below:

The annotated figure 4 of Huepenbecker above shows the locations of the first and
second recessed portions (see Ans. 3).
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4. Huepenbecker discloses a cross-section of figure 4 in which a first
recessed portion is smaller than a second recessed portion (see Huepenbecker, Fig. 4;
Ans. 3).
Discussion of 35 U.S.C. § 102(b) over Huepenbecker
Claim 1
We conclude that the Examiner has set forth a prima facie case that claim 1 is
anticipated by Huepenbecker. Huepenbecker teaches a lead body (FF 1) with tines
(FF 2) as well as two regions which form recessed portions into which the tines would
fold if the tines of Huepenbecker were collapsed (FF 3).
Appellants contend that they “cannot find in Huepenbecker et al. or any of the
cited references discussion related to the tines being recessed away from a first
recessed portion. Appellant respectfully submits that Huepenbecker et al. does not
enable such statements” (App. Br. 13).
We do not find this argument persuasive because the plain language of
Huepenbecker indicates that the tines are sometimes recessed (see FF 2). Specifically,
Huepenbecker teaches that the “lead is optionally provided with tines 40 to assist in
acute fixation of the electrode 38 in the right ventricular apex” (Huepenbecker, col. 2,
ll. 57-59). The teaching by Huepenbecker that the tines are used for “acute fixation”
inherently requires that the tines must be capable extending from a collapsed position
and fixing the electrode in place (see FF 2). Otherwise, if the tines were constantly
extended, they would not function in “acute fixation” but would rather cause constant
fixation. Thus, the specific language used by Huepenbecker is inconsistent with
Appellants’ argument since the tines of Huepenbecker necessarily operate to collapse
when not assisting in “acute fixation” and extend when performing “acute fixation
(see FF 2). See, e.g., Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed.
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Cir.1999) (“Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.”)
We are also not persuaded by Appellants’ argument that they “cannot find in
Huepenbecker et al. a recessed portion recessed away from the bottom surface of the
tine when the tine is disposed in the second collapsed position” (App. Br. 12). We
agree with the Examiner that
[w]hen the tines collapse during implantation, the first recessed
portion would necessarily be recessed away from the bottom surface
of the tine because the bottom surface of tines would contact the outer
surface of sleeve 36 (which forms the second recessed portion), thus
leaving the first portion (which is illustrated as smaller in cross-
section than the second recessed portion) recessed away from the
bottom surface of the tine.

(Ans. 14.) In our opinion, figure 4 shows that when the tines are recessed, the tines
will have a first recessed region that is recessed away from the bottom surface of the
tine when the tines are collapsed (see FF 3). We find that this disclosure of
Huepenbecker suffices to anticipate the elements of claim 1.
Claim 3
Appellants assert “that one skilled in the art could not determine the cross-
sectional areas of what the Final Office Action identifies as the first and second
recessed portions of Huepenbecker et al. given only a cross section along a single
axial plane” (App. Br. 13). Appellants also argue that the skilled artisan would not be
“able to identify the widths of what the Final Office Action identifies as the first and
second recessed portions of Huepenbecker et al. as being diameters” (App. Br. 13).
In analyzing claim 3, our mandate is to give claims their broadest reasonable
interpretation.
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Giving claims their broadest reasonable construction ‘serves the
public interest by reducing the possibility that claims, finally allowed,
will be given broader scope than is justified.’ Yamamoto, 740 F.2d at
1571; accord Hyatt, 211 F.3d at 1372; In re Zletz, 893 F.2d 319, 322
(Fed. Cir. 1989) (‘An essential purpose of patent examination is to
fashion claims that are precise, clear, correct, and unambiguous. Only
in this way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.’).

In re American Academy of Science Tech Center, 367 F.3d 1359, 1364, (Fed. Cir.
2004). Claim 3 recites that the “first cross-sectional area is smaller than the second
cross-sectional area”. As plainly interpreted, the claim does not require that all cross-
sections from the lead assembly result in a smaller first than second cross-sectional
area, only that at least a first and second cross-sectional area meet this requirement.
However, Appellants’ argument, in essence, is that the single cross-section from
Figure 4 of Huepenbecker does not demonstrate that all cross-sectional areas in Figure
4 would satisfy the requirements of claim 3. We conclude that the claim only requires
one cross section of the lead assembly that must have a first area smaller than the
second cross-sectional area. We find that the cross-section disclosed by
Huepenbecker in Figure 4 satisfies the requirement of claim 3 (FF 4) so that
Huepenbecker anticipates claim 3.
Claim 4
As discussed above with regard to claim 3, Huepenbecker discloses a cross-
section in Figure 4 which discloses both a first and second cross-section at the tine
interface (FF 4). Appellants submit “that because the patent drawings of
Huepenbecker et al. do not define the precise proportions of the elements and because
Appellant cannot find discussion in the specification regarding the issue, the figures of
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Huepenbecker et al. may not be relied on to show particular sizes to anticipate claim
4” (App. Br. 14).
The Examiner contends that “[f]igure 4 illustrates that the cross-sectional area
at the lead distal end (between electrode 38 and the tine- coupling portion) is
approximately the same as the cross-sectional area of the tine-coupling portion” (Ans.
15).
We agree with Appellants that Figure 4 of Huepenbecker cannot be relied upon
for the specific ratio of the first and second cross-sectional areas where the first cross-
sectional area “is less that 10% smaller than the second cross-sectional area” (Claim
4). “[I]t is well established that patent drawings do not define the precise proportions
of the elements and may not be relied on to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222
F.3d 951, 956 (Fed. Cir. 2000). See In re Wright, 569 F.2d 1124, 1127, 193 USPQ
332, 335 (CCPA 1977) (“Absent any written description in the specification of
quantitative values, arguments based on measurement of a drawing are of little
value.”)
Since Huepenbecker provides no quantitative arguments in the disclosure, we
reverse the rejection of claim 4 over Huepenbecker.
Claims 7 and 8
In analyzing claims 7 and 8, our mandate is to give these claims their broadest
reasonable interpretation. See In re American Academy of Science Tech Center, 367
F.3d 1359, 1364 (Fed. Cir. 2004). Claim 7 requires that “the first cross-section, the
second cross-section, and the third cross-section are each different from one another”
(Claim 7). Claim 8 similarly requires that the “first cross-sectional shape is different
than the second cross-sectional shape” (Claim 8). We interpret these claims broadly
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to simply require that the cross-sections differ, without any regard for any specific
quantitative level of difference.
Given this interpretation and Figure 4 of Huepenbecker, we find that each of the
cross sections in Huepenbecker differ from one another (see Huepenbecker, fig. 4).
While specific values for the differences cannot be derived from the figure, as
discussed above regarding claim 3, we think the figure reliably shows that the first,
second and third cross-sections differ in size. See In re Wolfensperger, 302 F.2d 950,
959 (CCPA 1962)(“We find nothing therein, however, which raises a presumption . . .
that four enlarged detailed figures consistently showing the same relative proportions
must be ignored.”)
We therefore affirm the rejection of claims 7 and 8 over Huepenbecker since
each of the cross-sections differs from one another.
We affirm the rejection of claims 1, 3, 7 and 8 under 35 U.S.C. § 102(b) over
Huepenbecker. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 6, 9, 10, 12, 14-16, and 19-20 as these claims were not argued
separately.
We reverse the rejection of claim 4 under 35 U.S.C. § 102(b) over Huepenbecker.
B. 35 U.S.C. § 102(b) rejection over Laske
Appellants argue that they “cannot find in Laske et al. a recessed portion recessed
away from the bottom surface of the tine when the tine is disposed in the second
collapsed position, as recited in claim 1 and 14” (App. Br. 15). Appellants further argue
that they “cannot find in the reference the first portion along the tine interface second
having a first cross-sectional shape that is different that a second cross-sectional shape
as recited in claim 8” (App. Br. 15).
Appellants also argue regarding claim 3 that
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one skilled in the art could not determine the cross- sectional areas of
what the Final Office Action identifies as the first and second recessed
portions of Laske et al. given only a cross section along a single axial
plane, nor would one skilled in the art be able to identify the widths of
what the Final Office Action identifies as the first and second recessed
portions of Laske et al. as being diameters.

(App. Br. 16.) Appellants assert that “the drawings of Laske et al. cannot be used to
anticipate claim 4, which recites ‘the first cross-sectional area is less than 10% smaller
than the second cross-sectional area’. That is, Appellant submits that because the patent
drawings of Laske et al. do not define the precise proportions of the elements . . . [they]
may not be relied on to show particular sizes” (App. Br. 17).
The Examiner responds that “tines such as the ones illustrated in Laske are
necessarily are formed of a flexible material such that the tines fold/collapse against the
lead body during insertion into the patient” (Ans. 18). The Examiner further contends
that
[w]hen the tines collapse during implantation, the first recessed
portion would necessarily be recessed away from the bottom surface
of the tine because the bottom surface of tines would contact the outer
surface lead body (which forms the second recessed portion), thus
leaving the first portion or groove 152 (which is illustrated as smaller
in cross-section than the second recessed portion) recessed away from
the bottom surface of the tine.

(Ans. 19.)
The Examiner also argues that “[s]ince cross-sectional area is a direct function of
diameter size, Examiner maintains that the cross-sectional area of the first recessed
portion must necessarily be smaller than the cross-sectional area of the second recessed
portion” (Ans. 20).
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In view of these conflicting positions, we frame the anticipation issue before us
as follows:
Does the lead assembly of Laske satisfy the limitations of claims 1, 3, 4, 7, and
8?
Findings of Fact
5. Laske teaches that the “lead is provided with an elongated lead body which
is covered with an insulation sheath” (Laske, col. 5, ll. 11-13).
6. Laske teaches that a “tine fixation mechanism 40 is immediately proximal
to the exposed tip electrode 26 and includes tubular sheath 22 from which four tines 24
(three of which are visible) project out at an acute angle” (Laske, col. 5, ll. 26-29).
7. Laske teaches that the “[s]oft, pliant, tines 24 engage with heart tissue and
urge tip electrode 26 into contact with the endocardium in a direction parallel to the lead
axis” (Laske, col. 5, ll. 30-32).
8. Laske discloses that the lead body has first and second recessed portions
as shown by Figure 5 of Laske as annotated by the Examiner shown below:

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The annotated figure 5 of Laske above shows the locations of the first and second
recessed portions (see Ans. 5).
9. Laske discloses a cross-section of figure 5 in which a first recessed
portion is smaller than a second recessed portion (see Laske, Fig. 5; Ans. 5).
Discussion of 35 U.S.C. § 102(b) over Laske
Claim 1
We conclude that the Examiner has set forth a prima facie case that claim 1 is
anticipated by Laske. Laske teaches a lead body (FF 5) with tines (FF 6-7) as well as
two regions which form recessed portions into which the tines would fold if the tines
of Laske were collapsed (FF 8-9).
We are not persuaded by Appellants’ argument that they “cannot find in Laske et
al. a recessed portion recessed away from the bottom surface of the tine when the tine is
disposed in the second collapsed position, as recited in claim 1 and 14” (App. Br. 15).
We agree with the Examiner that
[w]hen the tines collapse during implantation, the first recessed
portion would necessarily be recessed away from the bottom surface
of the tine because the bottom surface of tines would contact the outer
surface lead body (which forms the second recessed portion), thus
leaving the first portion or groove 152 (which is illustrated as smaller
in cross-section than the second recessed portion) recessed away from
the bottom surface of the tine.

(Ans. 19.) In our opinion, figure 5 of Laske shows that when the tines are recessed,
the tines will have a first recessed region that is recessed away from the bottom
surface of the tine when the tines are collapsed (see FF 8).
Appellants also argue that they “cannot find in Laske et al. or any of the cited
references discussion related to the tines being recessed away from a first recessed
portion. Appellant respectfully submits that Laske et al. does not enable such
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statements” (App. Br. 15). In our opinion, this argument fails to appreciate the point of
tines. If the tines were always extended, they would prevent the lead from being
introduced into the endocardial tissue in the way described by Laske as “passage
through a venous access” (Laske, col. 1, ll. 34-35). Therefore, the tines of Laske must
inherently collapse when being placed through the veins, but be capable of fixation with
“a plurality of tines projecting from the sheath” (Laske, col. 1, ll. 44-45).
We find that this disclosure of Laske suffices to anticipate the elements of claim
1.
Claim 3
Applying the same claim interpretation to claim 3 as discussed above, claim 3
does not require that all cross-sections from the lead assembly result in a smaller first
than second cross-sectional area, only that at least a first and second cross-sectional
area meet this requirement. We conclude that the claim only requires one cross
section of the lead assembly that must have a first area smaller than the second cross-
sectional area. We find that the cross-section disclosed by Laske in Figure 5 satisfies
the requirement of claim 3 (FF 9) so that Laske anticipates claim 3.
Claim 4
The Examiner argues that “Figure 5 illustrates that the cross-sectional area at
the lead distal end (between electrode 126 and the tine- coupling portion) is
approximately the same as the cross-sectional area of the tine-coupling portion” (Ans.
20).
We agree with Appellants that Figure 5 of Laske cannot be relied upon for the
specific ratio of the first and second cross-sectional areas where the first cross-
sectional area “is less that 10% smaller than the second cross-sectional area” (Claim
4). “[I]t is well established that patent drawings do not define the precise proportions
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of the elements and may not be relied on to show particular sizes if the specification is
completely silent on the issue.” Hockerson-Halberstadt, Inc. v. Avia Group Int'l, 222
F.3d 951, 956 (Fed. Cir. 2000). See In re Wright, 569 F.2d 1124, 1127, 193 USPQ
332, 335 (CCPA 1977) (“Absent any written description in the specification of
quantitative values, arguments based on measurement of a drawing are of little
value.”)
Since Laske provides no quantitative arguments in the disclosure, we reverse
the rejection of claim 4 over Laske.
Claims 7 and 8
As discussed above, Claim 7 requires that “the first cross-section, the second
cross-section, and the third cross-section are each different from one another” (Claim
7). Claim 8 similarly requires that the “first cross-sectional shape is different than the
second cross-sectional shape” (Claim 8). We interpret these claims broadly to simply
require that the cross-sections differ, without any regard for any specific quantitative
level of difference.
Given this interpretation and Figure 5 of Laske, we find that each of the cross
sections in Laske differ from one another (see Laske, fig. 5). While specific values for
the differences cannot be derived from the figure, as discussed above regarding claim
3, we think the figure reliably shows that the first, second and third cross-sections
differ in size. See In re Wolfensperger, 302 F.2d 950, 959 (CCPA 1962)(“We find
nothing therein, however, which raises a presumption . . . that four enlarged detailed
figures consistently showing the same relative proportions must be ignored.”)
We therefore affirm the rejection of claims 7 and 8 over Laske since each of the
cross-sections differs from one another.
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We affirm the rejection of claims 1, 3, 7 and 8 under 35 U.S.C. § 102(b) over
Laske. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections of
claims 6, 9, 10, 12, 14-16, and 19-20 as these claims were not argued separately.
We reverse the rejection of claim 4 under 35 U.S.C. § 102(b) over Laske.
C. 35 U.S.C. § 103(a) rejection over Huepenbecker and Alferness
We have already concluded that Huepenbecker teaches the limitations of claim 1.
Appellants argue that the “Final Office Action fails to provide a legally sufficient
motivation to combine the references” (App. Br. 18). Specifically, Appellants contend
that the motivations identified by the Examiner “are unsupported by the cited
references” (App. Br. 18).
The Examiner specifically found that “Alferness et al. teaches a variety of
embodiments in which a plurality of tines are received in a space or spaces formed
within the lead body (see Figs. 6, 8, and 10 and corresponding text at col. 6, line 8 - col.
7, line 20)” (Ans. 7). The Examiner then concludes that one reason to combine the
inventions is “to modify the first and/or second recessed portions of Huepenbecker et al.
such that recesses are created only at the area in which the tines contact the lead body as
taught by Alferness et al. in order to ensure that lead body is sufficiently strong during
implantation” (Ans. 7).
We agree with the Examiner that claim 2 is obvious over Huepenbecker and
Alferness. We find the Appellants’ arguments unpersuasive. Precise teachings directed
to the specific subject matter of a claim are not required to reach a conclusion of
obviousness. KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “[T]he
teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather
than expressly stated in the references…. The test for an implicit showing is what the
combined teachings, knowledge of one of ordinary skill in the art, and the nature of the
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problem to be solved as a whole would have suggested to those of ordinary skill in the
art.” In re Kahn, 441 F.3d 977, 987-988 (Fed. Cir. 2006). In this case, the Examiner has
provided a specific prior art reference, Alferness, which teaches that a “reduced
diameter portion 107 of the guide tip 102 forms a space 109 for receiving the tines”
(Alferness, col. 6, ll. 24-25). The Examiner has provided a specific common sense
reason to apply Alferness’s teaching to Huepenbecker, which is to minimize the risk of
the lead breaking due to reduced diameter (see Ans. 7). In our opinion, this is sufficient
motivation to combine the references and render the claims obvious.
We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) over Huepenbecker
and Alferness. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the
rejections of claims 5, 11, 13, and 17-18 as these claims were not argued separately.
D. 35 U.S.C. § 103(a) rejection over Laske
We have already concluded that Laske teaches the limitations of claim 1.
Appellants argue that the “Final Office Action fails to provide a legally sufficient
motivation to combine the references” (App. Br. 19). Specifically, Appellants contend
that the motivations identified by the Examiner “are unsupported by the cited
references” (App. Br. 19).
The Examiner specifically found that Laske “discloses a lead having two
recessed portions at the tine interface section of the lead body” (Ans. 8). The Examiner
recognizes that Laske does not teach “that the first recessed portion extends only a
portion around the perimeter of the lead body” (Ans. 8). However, the Examiner
contends that it would have been obvious to “modify the external groove 152 of Laske
et al. such that it only extends around a portion of the perimeter of the lead body . . . in
order to ensure that sheath 122 is sufficiently strong during implantation” (Ans. 8-9).
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We agree with the Examiner that claim 2 is obvious over Laske and find the
Appellants’ arguments unpersuasive. Precise teachings directed to the specific subject
matter of a claim are not required to reach a conclusion of obviousness. KSR Int'l Co. v.
Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “[T]he teaching, motivation, or suggestion
may be implicit from the prior art as a whole, rather than expressly stated in the
references…. The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.” In re Kahn, 441
F.3d 977, 987-988 (Fed. Cir. 2006). In this case, the Examiner has provided a specific
common sense reason to control the groove size of Laske, which is to minimize the risk
of the lead breaking due to a reduced diameter (see Ans. 8-9). In our opinion, this is
sufficient motivation to modify the reference and render the claims obvious.
We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) over Laske.
Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also affirm the rejections of claims
5, 11, and 17 as these claims were not argued separately.
E. 35 U.S.C. § 103(a) rejection over Laske and Alferness
We have already concluded that Laske anticipates claim 1, as discussed above
and that Alferness teaches that a “reduced diameter portion 107 of the guide tip 102
forms a space 109 for receiving the tines” (Alferness, col. 6, ll. 24-25). We therefore do
not find persuasive Appellants’ argument that Laske and Alferness lack the elements
necessary to render claims 13 and 18 obvious (see App. Br. 20).
We agree with the Examiner that claims 13 and 18 are obvious over Laske and
Alferness. We find the Appellants’ arguments regarding the absence of motivation
unpersuasive (see App. Br. 20). Precise teachings directed to the specific subject matter
of a claim are not required to reach a conclusion of obviousness. KSR Int'l Co. v.
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Teleflex Inc., 127 S. Ct. 1727, 1741 (2007). “[T]he teaching, motivation, or suggestion
may be implicit from the prior art as a whole, rather than expressly stated in the
references…. The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem to be solved
as a whole would have suggested to those of ordinary skill in the art.” In re Kahn, 441
F.3d 977, 987-988 (Fed. Cir. 2006). In this case, the Examiner has provided a specific
prior art reference, Alferness, which teaches that a “reduced diameter portion 107 of the
guide tip 102 forms a space 109 for receiving the tines” (Alferness, col. 6, ll. 24-25).
The Examiner has provided a specific common sense reason to apply Alferness’s
teaching to Laske, which is to “ensure that sheath 122 is sufficiently strong during
implantation” (see Ans. 10). In our opinion, this is sufficient motivation to combine the
references and render the claims obvious.
We affirm the rejection of claims 13 and 18 under 35 U.S.C. § 103(a) over Laske
and Alferness.
CONCLUSION
In summary, we affirm the rejection of claims 1, 3, 7 and 8 under 35 U.S.C. §
102(b) over Huepenbecker. We affirm the rejection of claims 1, 3, 7 and 8 under 35
U.S.C. § 102(b) over Laske. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also
affirm the rejections of claims 6, 9, 10, 12, 14-16, and 19-20 as these claims were not
argued separately. We also affirm the rejection of claim 2 under 35 U.S.C. § 103(a)
over Huepenbecker and Alferness. We also affirm the rejection of claim 2 under 35
U.S.C. § 103(a) over Laske. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we also
affirm the rejections of claims 5, 11, 13, and 17-18 as these claims were not argued
separately. We affirm the rejection of claims 13 and 18 under 35 U.S.C. § 103(a) over
Laske and Alferness.
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We reverse the rejection of claim 4 under 35 U.S.C. § 102(b) over Huepenbecker.
We reverse the rejection of claim 4 under 35 U.S.C. § 102(b) over Laske.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED IN PART

cdc

SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS MN 55402
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