Ex Parte Seifert et alDownload PDFPatent Trial and Appeal BoardMay 2, 201612627084 (P.T.A.B. May. 2, 2016) Copy Citation 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 2 Appeal2014-002611 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. 3 Appeal2014-002611 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. 4 Appeal2014-002611 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 5 Appeal2014-002611 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 6 Appeal2014-002611 Application 12/627,084 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 7 Appeal2014-002611 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 8 Appeal2014-002611 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 9 Appeal2014-002611 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. 10 Appeal2014-002611 Application 12/627,084 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. 11 Appeal2014-002611 Application 12/627,084 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 12 Copy with citationCopy as parenthetical citation