Ex Parte Seifert et al

Patent Trial and Appeal Board

May 2, 2016

12627084 (P.T.A.B. May. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/627,084 11130/2009
27581 7590 05/25/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Kevin R. Seifert
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.
P002883 l.O l/LGl 0126 3407
EXAMINER
HELLER, TAMMIE K
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/25/2016 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):
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 KEVIN R. SEIFERT and GREGORY A. BOSER
Appeal2014-002611
Application 12/627,084
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 2-5 and 11-14 under 35 U.S.C. § 102(e) as anticipated
by Zarembo (US 2007/0038278 Al, pub. Feb. 15, 2007) and as unpatentable
under 35 U.S.C. § 103(a) over Boser (US 2005/0240252 Al, pub. Oct. 27,
2005). 1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants cancel claim 16, obviating a rejection thereof under 35 U.S.C.
§ 112, second paragraph, and under 35 U.S.C. §§ 102(e) and 103(a). Final
Action 2-5; Appeal Br. 2.
Appeal2014-002611
Application 12/627,084
THE INVENTION
Appellants' invention relates to electrical leads for implantable
medical devices. Spec. 1, 11. 10-11. Claim 2, reproduced below, is
illustrative of the subject matter on appeal.
2. A medical electrical lead comprising:
a longitudinally extending insulative body;
an elongate conductor extending within the body;
an electrode comprising a conductive wire, the wire
extending from a first end to a second end and including a first
length, a second length and a transition length extending
between the first and second lengths;
the first length of the wire extending around the body and
between the first end and the transition length, and the second
length extending around the conductor, within the body, and
between the transition length and the second end;
a junction formed between the second length of the wire
and the conductor, within the body, the junction comprising:
a crimp between the second length of the wire and the
conductor; and
a weld between the second end of the wire and the
transition length of the wire; and wherein:
the body comprises a multilumen tube; and
the conductor extends longitudinally within a lumen of the
multilumen tube, the junction being located within the lumen of
the multilumen tube.
OPINION
Anticipation by Zaremba
Claim 2
The Examiner finds that Zarembo discloses all of the elements of
claim 2. Final Action 3. In particular, the Examiner's rejection focuses on
the embodiment depicted in Figure 5C and disclosed in paragraphs 68-71 of
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Application 12/627,084
Zaremba, identifying lead body 505 as a longitudinally extending insulative
body and conductor 510 as a conductive wire. Id.
Appellants traverse the Examiner's rejection by arguing that an
embodiment depicted in Figures 2A and 2B of Zarembo illustrates a
conductor, not a lead body. Appeal Br. 8. Appellants argue that Zarembo
discloses a single-lumen tube of conductive rather than insulative material.
Id.
In response, the Examiner explains that Figure 5B of Zarembo shows
a body with a multi-lumen tube where a conductor extends within a lumen.
Ans. 2 (citing Zarembo i-fi-1 61, 67, 69, & 70).
In reply, Appellants re-assert that the Figure 2A-2B embodiment of
Zarembo discloses a conductive metal tube. Reply Br. 4. Appellants further
argue that Figures 5B and 6D illustrate conductive metal tubes. Id.
To anticipate a claim, a single prior art reference must expressly or
inherently disclose each claim limitation. Celeritas Techs., Ltd. v. Rockwell
Int'! Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). Anticipation also
requires disclosure of all the elements "arranged as in the claim." Finisar
Corp. v. Direct Group, Inc., 523 F.3d 1323, 1334 (Fed. Cir. 2008).
Appellants' arguments do not apprise us of error. Claim 2 requires,
inter alia: (1) an insulative body: (2) an elongate conductor that extends
within the insulative body; and (3) a conductive wire that extends around the
body. Claims App. Appellants focus their attention on the fact that
Zarembo discloses the use of conductive metal tubes. Reply Br. 4.
Zarembo, indeed, discloses the use of tubular electrodes and conductive
tubing. Zarembo, i-fi-1 51, 52. However, the Examiner identifies lead
body 505 as satisfying the claim limitation directed to an insulative body.
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Application 12/627,084
Final Action 3. Appellants never address the Examiner's finding that lead
body 505 of Zarembo satisfies the insulative body element of claim 2. Thus,
Appellants' arguments never meet the substance of the Examiner's rejection.
In view of the foregoing, we sustain the rejection of claim 2.
Claim 4
In rejecting claim 4, the Examiner finds, among other things, that
Zarembo satisfies the limitation directed to an electrode wire that has a
substantially rectangular cross-section. Final Action 3--4. In particular, the
Examiner finds that, when electrode wire 510 is cut along its longitudinal
axis, the "cross-section" is substantially rectangular. Id. at 4.
In traversing the rejection of claim 4, Appellants contend that the
Examiner erred in finding that Zarembo' s electrode wire exhibits a
rectangular cross-section. Appeal Br. 8. Essentially, Appellants contend
that the plain and ordinary meaning of "cross-section" in the relevant art is
based on a geometric plane that is perpendicular to the longitudinal axis of
an elongated member, such as a wire. Id. We agree.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We have been repeatedly
admonished by the Federal Circuit that a claim construction during
examination cannot be so broad as to be unreasonable.
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Application 12/627,084
"[t]he protocol of giving claims their broadest reasonable
interpretation ... does not include giving claims a legally
incorrect interpretation." In re Skvorecz, 580 F.3d 1262, 1267
(Fed. Cir. 2009); see also In re Suitco Surface, Inc., 603 F.3d
1255, 1260 (Fed. Cir. 2010) ("The broadest-construction rubric
coupled with the term 'comprising' does not give the PTO an
unfettered license to interpret claims to embrace anything
remotely related to the claimed invention."). Rather, "claims
should always be read in light of the specification and teachings
in the underlying patent." Suitco, 603 F.3d at 1260 .... Even
under the broadest reasonable interpretation, the Board's
construction "cannot be divorced from the specification and the
record evidence," In re NTP, Inc., 654 F.3d 1279, 1288 (Fed.
Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain
language and disclosure" will not pass muster. Suitco, 603 F.3d
at 1260.
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015);
See also In re Man Machine Interface Tech. LLC, - F.3d-, 2016 WL
1567181, *4 (Fed. Cir. April 19, 2016) (Board's broad construction deemed
unreasonable in view of the specification's clear teaching).
In the instant case, Appellants' Specification does not define "cross-
section" expressly. Nevertheless, the specification may also act as a
dictionary when it defines terms by implication. See Irdeto Access, Inc. v.
Echostar Satellite Corp., 383 F.3d 1295, 1300 (Fed. Cir. 2004) ("Even when
guidance is not provided in explicit definitional format, the specification
may define claim terms by implication such that the meaning may be found
in or ascertained by a reading of the patent documents.") (citations omitted).
The Specification describes Figures lB-C and Figure 4 as "cross-section"
views. Spec. 4, 11. 5---6, 14--15. The Specification later explains that "[t]hose
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Application 12/627,084
skilled in the art will appreciate that the wire forming any of electrodes 150,
150', 450 may have any suitable cross-section, for example, round,
rectangular, flattened, or otherwise shaped." Spec. 7, 11. 27-29 (emphasis
added). The Specification later explains that, in some embodiments:
the wires have a substantially rectangular cross-section, wherein
the width thereof extends generally in the direction of
longitudinal axis 21, in order to maximize both an electrode
surface area defined by the turns about axis 21, and a contact
surface area between clasps 205, 205', 405 and the conductor
crimped therein. According to some exemplary embodiments,
a wire of any of electrodes 150, 150', 405 is formed from
platinum-iridium clad tantalum and has a rectangular cross-
section with a width between approximately 0.005 inch 10 and
approximately 0.015 inch and a thickness between
approximately 0.001 inch and approximately 0.005 inch.
Spec. 8, 11. 3-11. Given the contextual cues in which "cross-section" is used
throughout the Specification, such as "width" and "thickness," a person of
ordinary skill in the art would understand that the cross-section of the
electrode wire in claim 4 is taken from a plane that is transverse to the
longitudinal axis of the wire. The Examiner's construction, which is based
on a geometric plane extending along the longitudinal axis of the wire, is
unreasonably broad and constitutes reversible error.
Applying the correct construction of "cross-section" to the electrode
wire of Zarembo, we do not sustain the Examiner's anticipation rejection of
claim 4.
Claims 3, 11, and 13
These claims depend directly from claim 4. Claims App. The
Examiner's rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 4. Thus, for essentially the same
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reason expressed above in connection with claim 4, we do not sustain the
anticipation rejection of claims 3, 11, and 13.
Claim 5
The Examiner finds that Zarembo discloses all of the limitations of
claim 5. Final Action 4--5. In particular, the Examiner finds that Zarembo's
element 510 is a conductive wire with a first length that extends around the
body and a second length that extends around the conductor within the body.
Id.
Appellants argue that Zarembo' s tubes have no direction "around" the
conductor as claimed. Appeal Br. 10. We agree. Zarembo's element 510
extends coaxially within tube 516 and, thus, does not go "around" it. See
Zarembo, Fig. 5C.
We do not sustain the anticipation rejection of claim 5.
Claim 12 and 14
These claims depend directly from claim 5. Claims App. The
Examiner's rejection of these claims suffers from the same infirmity that
was identified above with respect to claim 5. Thus, for essentially the same
reason expressed above in connection with claim 5, we do not sustain the
rejection of claims 12 and 14.
Unpatentability of
Claims 2-5 and 11-14 Over Boser
Claim 2
The Examiner finds that Boser discloses all of the limitations of
claim 2 substantially as claimed, except for a weld between the second end
of the wire 7 41 and the transition length of the wire. Final Action 6-7. The
Examiner finds that it would have been an obvious matter of design choice
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Application 12/627,084
to modify Boser to include a weld between the second end of the wire 7 41
and the transition length of the wire. Id. at 7. According to the Examiner, a
person of ordinary skill in the art would have done this to eliminate the need
for fitting 220 and provide a smooth profile with the elimination of the free
end. Id.
Appellants argue that Boser discloses multiple single lumen tubes
whereas the claim calls for a multi-lumen tube, which Appellants contend
requires a single tube with more than one lumen. Appeal Br. 11. Appellants
further argue that one tube within another tube is not a single tube, but rather
two tubes, each with one lumen. Id.
The Examiner responds that a multi-lumen tube is a tube that includes
more than one lumen. Ans. 6. The Examiner directs our attention to
Figure 2B of Boser as illustrating tube 10 which includes lumens 202, 204,
and 205. Ans. 6. In reply, Appellants concede that Boser discloses a multi-
lumen lead, but attempts to distinguish a multi-lumen lead from a multi-
lumen tube. Reply Br. 9.
We have reviewed Figure 2B of Boser. Figure 2B shows a tubular
shaped lead body 10. Elements 201, 202, and 204 appear to meet the plain
and ordinary meaning of lumen and are disposed within body 10. We fail to
see a patentable distinction between the embodiment depicted in Figure 2B
of Boser and the multi-lumen tube limitation in claim 2.
Therefore, we sustain the unpatentability rejection of claim 2.
Claim 4
The Examiner finds that Boser discloses all of the limitations of
claim 4 substantially as claimed, except for a weld between the second end
of the wire 741 and the transition length of the wire. Final Action 8. The
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Application 12/627,084
Examiner finds that it would have been an obvious matter of design choice
to modify Boser to include a weld between the second end of the wire 7 41
and the transition length of the wire. Id. According to the Examiner, a
person of ordinary skill in the art would have done this to eliminate the need
for fitting 220 and provide a smooth profile with elimination of the free end.
Id.
Appellants argue that Boser fails to disclose a wire with a rectangular
cross-section. Appeal Br. 12. Essentially, Appellants make the same
argument that we discussed above with respect to the anticipation rejection
of claim 4 over Zarembo.
In response, the Examiner states that, notwithstanding Appellants'
argument, it nevertheless would have been obvious to change the shape of
the transverse cross-section to be substantially rectangular. Ans. 8.
In reply, Appellants essentially reiterate their previous argument from
the Appeal Brief. Reply Br. 10. Appellants fail to address the Examiner's
statement in the Answer that it would have been obvious to use a
substantially rectangular transverse cross-section.
The Specification states that the invention can be practiced with "any
suitable cross-section, for example, round, rectangular, flattened, or
otherwise shaped." Spec. 7, 11. 28-29 (emphasis added). The Specification
does not appear to ascribe any patentable novelty to the cross-sectional
shape of the claimed wire, leading us to the conclusion that the shape is
merely a matter of design choice. See In re Dailey, 357 F.2d 669, 672-73
(CCP A 1966) (configuration of claimed disposable plastic nursing container
was a matter of choice which a person of ordinary skill in the art would have
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Application 12/627,084
found obvious absent persuasive evidence that the particular configuration of
the claimed container was significant).
Appellants have not apprised us of error in the Examiner's finding
that it would have been obvious to select a substantially rectangular
transverse cross-sectional shape for the wire. Appellants raise no other
challenge to the rejection. Therefore, we sustain the unpatentability
rejection of claim 4.
Claims 3, 11, and 13
Appellants do not argue for the separate patentability of claims 3, 11,
and 13. Consequently, Appellants have waived the right to argue these
claims. See 37 C.F.R. §41.37(c)(l)(iv) (2015); see also 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"). We summarily sustain the
rejection of these claims.
Claim 5
The Examiner finds that Boser discloses all of the limitations of
claim 5 substantially as claimed, except for a weld between the second end
of the wire 741 and the transition length of the wire. Final Action 9-10.
The Examiner finds that it would have been an obvious matter of design
choice to modify Boser to include a weld between the second end of the wire
741 and the transition length of the wire. Id. According to the Examiner, a
person of ordinary skill in the art would have done this to eliminate the need
for fitting 220 and provide a smooth profile with the elimination of the free
end. Id.
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Appellants argue that Boser exhibits a reversal of winding direction in
relation to the coil wire extending around the conductor. Appeal Br. 13.
In response, the Examiner observes that Appellants fail to support
their argument with any evidence from the record. Ans. 8. The Examiner
directs our attention to an annotated version of Figure 7D from Boser as
evidence that the directional limitation of the claim is met. Ans. 8-9.
In reply, Appellants argue that the Examiner's annotated version of
Figure 7D depicts a reversal of the winding direction, namely,
counterclockwise around the conductor and clockwise around the lead body.
Reply Br. 11.
The Examiner's annotated illustration shows winding in the
counterclockwise direction around each of the conductor and the lead body.
See Ans. 9. A preponderance of the evidence favors the Examiner's
position.
We, therefore, sustain the unpatentability rejection of claim 5.
Claim 12 and 14
Appellants do not argue for the separate patentability of claims 12 and
14. Consequently, Appellants have waived the right to argue these claims.
See 37 C.F.R. §41.37(c)(l)(iv) (2015); Hyatt, 551 F.3d at 1314. As a result,
we summarily sustain the rejection of these claims.
DECISION
The decision of the Examiner to reject claim 2 as anticipated by
Zarembo is affirmed.
The decision of the Examiner to reject claims 3, 4, 11, and 13 as
anticipated by Zarembo is reversed.
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The decision of the Examiner to reject claims 5, 12, and 14 as
anticipated by Zarembo is reversed.
The decision of the Examiner to reject claim 2 as unpatentable over
Boser is affirmed.
The decision of the Examiner to reject claims 3, 4, 11, and 13 as
unpatentable over Boser is affirmed.
The decision of the Examiner to reject claims 5, 12, and 14 as
unpatentable over Boser is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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