Ex Parte Sleeper

Patent Trial and Appeal Board

Oct 7, 2016

13430223 (P.T.A.B. Oct. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/430,223 03/26/2012 Scott B. Sleeper
10723 7590 10/12/2016
Medtronic Inc. (CRDM/MRG)
710 Medtronic Parkway NE
MS LC-340
Minneapolis, MN 55432-5604
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.
P0020458.USC1/13404430102 8581
EXAMINER
HOLMES,REXR
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/12/2016 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
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT B. SLEEPER
Appeal2014-007947
Application 13/430,223
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
GORDON D. KINDER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 22--41. App. Br. 1. Claims 1-21 have been canceled.
See Appellant's Response dated July 2, 2013. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to an electronic device
and, more particularly, to a feed-through assembly in an electronic device."
Appeal2014-007947
Application 13/430,223
Spec. if 2. Claims 22, 32, and 39 are independent claims. Claim 22
illustrates the claims on appeal and is reproduced below.
22. An implantable medical device comprising:
a housing comprising a bottom wall and a side wall;
an electronic component disposed within the housing and
having first and second conductors;
a first feed-through assembly inserted through the bottom
wall of the housing and a second feed-through assembly
inserted through the side wall of the housing, wherein each of
the feed-through assemblies includes:
a body having a first end positioned inside the
housing and a second end positioned outside the housing,
a conductive element carried within and extending
through the body, wherein a first end of the elongated
conductive element is located inside the housing and the
second end of the elongated conductive element is
located outside of the housing, and wherein the
conductive element defines an axis extending between
the first end and the second end of the conductive
element,
a first conductive block located inside the housing
proximate the first end of the body, the first conductive
block comprising a first contact surface located within
the housing, wherein the first contact surface comprises a
flat surface,
a second conductive block located inside the
housing proximate the first end of the body, the second
conductive block comprising a second contact surface
located within the housing, wherein the second contact
surface comprises a flat surface,
insulating material disposed between the first
conductive block and the second conductive block,
wherein a portion of the conductive element is positioned
between the first conductive block and the second
conductive block, and wherein the insulating material
electrically insulates the first conductive block from the
conductive element;
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Application 13/430,223
wherein the first contact surface and the second contact
surface of the first feed-through are oriented vertically when the
bottom wall of the housing is oriented horizontally;
wherein rotation of the second feed-through about the
axis defined by the conductive element rotates the orientation of
the first contact surface and the second contact surface relative
to the bottom wall.
REFERENCES RELIED ON BY THE EXAMINER
Stevenson US 2005/0007718 Al Jan. 13, 2005
Twetan US 2004/0203583 Al Sept. 15, 2005
THE REJECTION ON APPEAL
Claims 22--41 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stevenson and Twetan.
ANALYSIS
Appellant presents arguments for claims 22--41 together (App. Br. 12-
19), claims 24 and 32--41 together (App. Br. 19-21), and claims 28, 36, and
39--41 together (App. Br. 21-22). We select claims 22, 24, and 28 for
review with (a) claims 23, 25-27, and 29-31 standing or falling with claim
22; (b) claims 32-35, 37, and 38 standing or falling with claim 24; and, (c)
claims 36 and 39--41 standing or falling with claim 28. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 22
The Examiner primarily relies on Stevenson for disclosing the
limitations of claim 22 but relies on Twetan for teaching "that it is known to
use various feed through locations" so as "to provide a means for attaching
the various components to the device." Final Act. 4---6. The Examiner
concludes that it would have been obvious to modify Stevenson "with
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Application 13/430,223
various feed through locations as taught by Twetan" so as to provide "feed
throughs at locations on the device that are efficient and practical with
respect to the locations of the external components." Final Act. 6.
Appellant focuses primarily on the teachings of Stevenson and also on
the Examiner's annotation of Figure 76 of Stevenson (see Final Act. 6).
App. Br. 13-16. Appellant contends, "[t]he Examiner's annotated version of
Figure 7 6 identifies asserted first and second conductive blocks in the
substrate that are defined by arbitrarily selected imaginary portions of the
substrate 1140 of Stevenson." App. Br. 13; see also Reply Br. 2-3.
Appellant's contention that the Examiner relied on "arbitrarily selected
imaginary portions of the substrate 1140" is mistaken. Instead, the
Examiner specifically identified the first conductive block as comprising
Stevenson's "substantially L-shaped portion (246)" that engages "first flat
contact surface (bond pad 950)." Final Act. 4. Regarding the second
conductive block, the Examiner specifically identified Stevenson's
"conductive block nested within the L-shaped portion (the portion outlined
below)." Final Act. 4. Regarding substrate 1140 that Appellant addresses,
this is the substrate upon which Stevenson's circuit traces 246 and bond pads
950 are found. See Stevenson i-fi-1217, 218 and Fig. 76. Hence, the
Examiner is identifying (see Final Act. 6) different circuit traces and bond
pads as corresponding to the claimed first and second conductive blocks, not
"arbitrarily selected imaginary portions of the substrate 1140" as Appellant
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Application 13/430,223
asserts. 1 Accordingly, Appellant's contentions regarding substrate 1140
(App. Br. 13-16) are not persuasive of Examiner error.
Appellant also argues that the Examiner is relying on "a rejection
based on inherency" and that the requirements for such a rejection "have not
been met." App. Br. 15. Appellant again appears to be mis-reading the
Examiner's rejection because nowhere can it be found (nor does Appellant
identify where it can be found) that the Examiner is relying on a theory of
inherency in rejecting claim 22. Instead, the Examiner has expressly
identified and specifically pointed out in Stevenson what the respective
conductive blocks comprise (i.e., items 246 and 950) and where they can be
found (see Final Act. 6). Accordingly, Appellant's contentions premised on
a finding of inherency by the Examiner are not persuasive of Examiner error.
Appellant also contends that Twetan "does nothing to cure these
deficiencies present in Stevenson." App. Br. 16. We are not in agreement
with Appellant that Stevenson needs curing. Appellant's contention is not
persuasive of Examiner error.
Appellant further contends that Twetan does not disclose a first feed-
through inserted in a bottom wall and a second feed-through inserted in a
side wall as claimed. App. Br. 16-18. Appellant does not dispute that
Twetan teaches feed-throughs in different walls of a housing (see Twetan
i-f 35 and Fig. 1 ), only that Twetan does not "teach or suggest the specific
recitations" (i.e., in a bottom wall and a side wall). App. Br. 17. We are not
1 It is further noted that Appellant's Specification does not define a
conductive block other than to state that "Block 34 is defined by length (L3),
height (H2) and radial aperture portion R." Spec. i-f 25. Appellant does not
explain how Stevenson's circuit traces 246 and bond pads 950 fail to have a
length, a height, or a radial aperture portion. See also Ans. 5---6.
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persuaded by Appellant's contention because, as stated by the Examiner
"top, bottom and sides are all relative" (Ans. 8; see also Final Act. 5) and
also, Appellant does not explain how it is not obvious to provide "feed
throughs at locations on the device that are efficient and practical with
respect to the locations of the external components." Final Act. 6; see also
Ans. 8. It is further noted that no criticality regarding the location of the
feed throughs on the bottom and side wall is provided by Appellant. 2
Appellant's further contentions regarding inherency (App. Br. 17-18) are
likewise not persuasive.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 22, 23, 25-27, and 29-31 as being
obvious over Stevenson and Twetan.
Claim 24
Claim 24 depends from claim 22 above and includes the additional
limitation wherein "the first conductive block comprises a substantially L-
shaped body and the second conductive block is nested within the
substantially L-shaped body of the first conductive block." Appellant
contends that "it has not been shown how or why one of ordinary skill in the
art would modify Stevenson et al. in view of Twetan et al. to reach" such a
construction. App. Br. 19. Appellant is presuming that Stevenson must be
modified to reach the recited "L-shaped body" for the first block with the
second block being "nested within" this L-shaped body. However, the
Examiner does not indicate that any such modification is required to achieve
this construction because Figure 7 6 of Stevenson already shows such an
2 Additionally, Stevenson teaches "that these circuit traces can be run in any
direction in which one[']s imagination allows." Stevenson i-f 218.
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arrangement. Final Act. 4; Ans. 6, 9. Appellant's further contentions
regarding inherency, substrate 1140, and the failure of Twetan to cure the
deficiency of Stevenson (App. Br. 20-21) are likewise not persuasive.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 24, 32-35, 37, and 38 as being
obvious over Stevenson and Twetan.
Claim 28
Dependent claim 28 includes the additional limitation "wherein the
radial aperture portion of the second conductive block does not completely
surround the elongated conductive element." The Examiner finds that even
without the provided annotations, the aperture of the second block shown in
Figure 7 6 of Stevenson does not surround "the entire conductor." Ans. 6, 9.
The Examiner further states, "the radial portion of [Stevenson's] second
conductive block does not completely surround the remaining parts of the ..
. conductor." Ans. 10. It would seem the Examiner is interpreting this
limitation as not requiring total encapsulation of the conductor ("entire,"
"the remaining parts"), rather than the aperture simply not completely
surrounding an adjacent portion thereof. Claim 28 does not require the
entirety of the conductor to not be surrounded, nor does claim 28 require
"the remaining parts" of the conductor to not be surrounded. Instead, claim
28 recites a limitation wherein the second block's aperture "does not
completely surround the elongated conductive element" (i.e., Stevenson's
corresponding lead wire 136). Furthermore, Stevenson's Figure 75 only
depicts apertures that fully encircle wire 136, and the Examiner provides no
indication where Stevenson teaches or discloses an aperture that "does not
completely surround" wire 136 as claimed. Accordingly, we are not
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Application 13/430,223
persuaded the Examiner has correctly and reasonably interpreted this claim
limitation in light of Appellant's disclosure (even if interpreted broadly), nor
are we persuaded that Stevenson teaches or suggests such a limitation.
Consequently, we do not sustain the Examiner's rejection of claims 28, 36,
and 39--41 as being obvious over Stevenson and Twetan.
DECISION
The Examiner's rejection of claims 22-27, 29-35, 37, and 38 is
affirmed.
The Examiner's rejection of claims 28, 36, and 39--41 is reversed.
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-IN-PART
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