Ex Parte Swanson et al

Patent Trial and Appeal Board

Apr 8, 2016

12911086 (P.T.A.B. Apr. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/911,086 10/25/2010 Lawrence D. Swanson
45458 7590 04/12/2016
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
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.
279.H23US1 9471
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
04/12/2016 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE D. SW ANSON,
JOHN M. EDGELL, NICK A. YOUKER,
SCOTT DAHL, and KEVIN P. RODBY
Appeal2014-002890
Application 12/911,086
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, 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 7-15, 17, and 21-29. App. Br. 1. Claims 1---6, 16, and
18-20 have been canceled. See Response After Final Action dated April 25,
2013. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates generally to implantable medical
devices and particularly to a vented set screw for securing a connection
Appeal2014-002890
Application 12/911,086
between an implantable medical device and an implantable lead." Spec.
1: 11-13. Claim 7, the sole independent claim, is representative of the claims
on appeal and is reproduced below:
7. An implantable medical device configured to be
connected to one or more implantable leads each including one
or more electrodes, the implantable medical device comprising:
electronic circuitry;
a hermetically sealed housing encapsulating the
electronic circuitry; and
a header attached to the housing, the header including:
a header bore configured to receive an implantable
lead of the one or more implantable leads;
a screw bore in fluid communication with the
header bore;
a vented set screw placed in the screw bore, the
vented set screw including an axial cavity including a
portion shaped to receive a tool; and
a seal plug placed at least partially in the screw
bore and in contact with the vented set screw, the seal
plug including a seal slit allowing for access to the
vented set scre\v by the tool,
wherein the vented set screw includes one or more
venting channels providing for fluid communication between
the axial cavity and a cavity formed between the seal plug and
the vented set screw, the one or more venting channels each
being a hole having an approximately circular cross-section.
REFERENCES RELIED ON BY THE EXAMINER
Jackson US 6,059,786 May 9, 2000
Ries US 2005/0131481 Al June 16, 2005
Libbus US 2006/0106428 Al May 18, 2006
Spadgenske US 2006/0259092 Al Nov. 16, 2006
Tidemand US 7,231,253 B2 June 12, 2007
Fruland US 2008/0063490 Al Mar. 13, 2008
Bange US 2008/0228237 Al Sept. 18, 2008
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Appeal2014-002890
Application 12/911,086
THE REJECTIONS ON APPEAL
Claims 7, 11, 12, 15, and 21-23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Fruland, Tidemand, and Jackson.
Claims 8, 9, and 24--27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fruland, Tidemand, Jackson, and Bange.
Claims 8, 10, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fruland, Tidemand, Jackson, and Libbus.
Claims 13, 14, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Fruland, Tidemand, Jackson, and Spadgenske.
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Fruland, Tidemand, Jackson, and Ries.
ANALYSIS
Claim 7, the sole independent claim on appeal, is directed to an
implantable medical device comprising, inter alia, a vented set screw.
Claim 7 includes the limitation: "the one or more venting channels each
being a hole having an approximately circular cross-section."
The Examiner rejects claim 7 under the combination of Fruland,
Tidemand, and Jackson (Tidemand is not relied upon with respect to the
above noted limitation). Final Act. 2-5. The Examiner primarily relies on
Fruland for disclosing a vented set screw but acknowledges that "Fruland et
al does not explicitly disclose a hole having an approximately circular cross-
section." Final Act. 3--4. The Examiner relies on Jackson for this teaching
and references item 22 in Jackson's Figures 1 and 3 for support. Final Act.
4. Alternatively, the Examiner considers it a matter of "design choice" to
modify Fruland "with a hole having an approximately circular cross-
section." Final Act. 4.
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Appeal2014-002890
Application 12/911,086
Appellants address both rationales, i.e., modifying Fruland based on
Jackson's item 22 and modifying Fruland based on design choice. App. Br.
6-9; Reply Br. 2--4. We do the same.
Examiner's reliance on Jackson's item 22
Jackson's item 22 is depicted as a U-shaped slot and described as a
"tool receiver." Jackson 4:40, Figs. 1 and 3. The Examiner states that "the
Examiner's interpretation is not unreasonable and one of ordinary skill in the
art would consider 'approximately circular' to be any shape that has a partial
circular shape (such as the U-shape of Jackson, as it consists of a partially
curved portion)." Ans. 3. Appellants disagree stating that "[b ]eing merely
'partially curved' is not a teaching or suggestion for being 'approximately
circular."' 1 App. Br. 7.
There is merit to Appellants' contention. The terms "partially"
and "approximately" are not interchangeable. The term
"approximately" means "to come near" and "nearly correct or exact"
whereas the term "partially" means "of or relating to a part rather than
the whole: not general or total."2 Applying this distinction to
Jackson's item 22, the depicted U-shape may disclose a partially
circular cross-section, or even an approximately (or nearly) semi-
1 Appellants further state "[ c ]laim 7 recites an approximately circular shape,
and does not recite a 'partially' circular shape. If Appellant[ s] had wished to
claim a partially circular U-shape, then the claim would have recited that."
Reply Br. 3.
2 WEBSTER'S NEW COLLEGIATE DICTIONARY 56, 828 (1979). See
also Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/approximate and http://www.merriam-
webster.com/ dictionary/partial (last visited March 25, 2016).
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Appeal2014-002890
Application 12/911,086
circular cross-section, but we are persuaded by Appellants that it is
not reasonable to understand Jackson's U-shape as depicting an
"approximately circular" cross-section as recited in claim 7. 3
Appellants also contend that "the Examiner fails to consider the
ordinary usage of 'circular. "'4 Reply Br. 2; see also Reply Br. 3
("very young children can identify a circle even if it is not the perfect
geometrical definition of a circle"). In this regard, the Examiner does
not otherwise explain how or why a U-shaped, semi-circular cross-
section (for receiving a tool therein) as taught by Jackson can be said
to have an "approximately circular cross-section" as recited in claim
7. 5 See also Reply Br. 3.
Based on the record presented, we are not in agreement with the
Examiner's underlying basis for the first stated reason to reject
3 When a "word of degree" is used, such as the term "substantially," we
must determine whether the specification provides "some standard for
measuring that degree." Enzo Biochem Inc. v. Applera Corp., 599 F.3d
1325, 1332 (Fed. Cir. 2010); Seattle Box Co., Inc. v. Indus. Crating &
Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984). Here, Appellants'
Specification references Figs. 2---6 which depict a circular opening. There is
no indication in Appellants' Specification that the opening is approximately
half of that; i.e., a semi-circle. See Spec. 9:14--15
4 WEBSTER'S NEW COLLEGIATE DICTIONARY 200 (1979) defines
"circular" as "having the form of a circle." The word "circle" is defined as
"a closed plane curve." Id. See also Meriam-Webster.com,
http://www.merriam-webster.com/dictionary/circle (last visited March 25,
2016).
5 When addressing the "design choice" rationale, the Examiner states that
"the claim does not exclude a slot." Ans. 5. Correct as this is, claim 7
recites an "approximately circular cross-section," and we are not persuaded
that Jackson's slot depicts a circular cross-section. See also Reply Br. 4.
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Application 12/911,086
independent claim 7, and also dependent claims 11, 12, 15, and
21-23.
Examiner's reliance on design choice
In support of the Examiner's alternate "design choice" rationale
based on Fruland, the Examiner concludes that Appellants have "not
disclosed that a hole having an approximately circular cross-section
provides an advantage, is used for a particular purpose, or solves a
stated problem." Final Act. 4. The Examiner also references
Appellants' Specification to the effect that Appellants recognize "that
there are other embodiments and that the cross section of the venting
channel is determined based on mechanical properties and ease of
manufacturing." Ans. 4 (referencing Spec. 9:12-15). Appellants
contend that "[ t ]his assertion of obviousness is improper because the
alleged 'arbitrary design consideration' does not result in a structure
that is functional in serving the purpose ofFruland's 'hole."' App.
Br. 8.
We note that in making their respective positions known, the
Examiner references Fruland's items 306 and 404 (Final Act. 3) while
Appellants address Fruland's item 406 (App. Br. 8). These references
to different items are immaterial because Fruland describes each as
being a tool recess (see Fruland i-fi-1 42 ("recess 306 mateable to a
driver"), 45 ("recess 404 is a hex socket" and "slot 406" is "suited for
coupling fastener 402 with a driver")).
Appellants dispute the Examiner's "design choice" rationale
because "[ o ]ne having ordinary skill in the art would not consider a
hole having an approximately circular cross-section a suitable design
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Application 12/911,086
choice for Fruland's" tool recesses (e.g., items 306, 404, and 406).
App. Br. 8. We understand Appellants to be contending that a
covered approximately circular cross-sectional hole (arranged as are
Fruland's items 306, 404, and 406) does not lend itself to being
accessed by a tool as do the cross-sectional shapes depicted in
Fruland. 6 The Examiner does not explain how, if Fruland were
modified to have the claimed hole (i.e., a matter of "design choice"),
such hole would still function as a tool recess since the access
previously provided by Fruland's open slots 306, 404, or 406 is now
blocked.
Appellants also dispute this "design choice" rational because
"the claimed subject matter allows the one or more venting channels
to be formed in locations of the set screw that would not be
appropriate for a slot such as Fruland's slot 406." App. Br. 8-9. In
other words, "based on considerations" such as "ease of
manufacturing," we understand that Appellants' "approximately
circular" holes can be located where these advantages are possible,
and their location is not limited to only being where such holes
intersect with an upper surface of the screw as in Fruland. The
Examiner does not explain how Fruland's corresponding holes can be
located elsewhere (i.e., away from intersecting with a top of the
screw) without altering their function of being accessed by a tool.
6 See also Appellants' contention that "there is no proper reason for one
having ordinary skill in the art to choose a hole having an approximately
circular cross-section for driver coupling and expect that hole to perform
equally well as Fruland's slot 406 for that purpose." App. Br. 8.
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Application 12/911,086
In short, based on these contentions, Appellants appear to have
shown how the claimed vent channels having an "approximately
circular cross-section" would not be a design choice for Fruland. This
is because Fruland requires a large opening for a tool, which would
result in a cross-section that does not approximate a circular cross-
section. Accordingly, and based on the record presented, we are
persuaded that the Examiner's rejection based on "design choice"
warrants reversal. We do not sustain the Examiner's rejection of
independent claim 7, and also dependent claims 11, 12, 15, and 21-
23, on this basis.
The rejection of (a) claims 8, 9, and 24-27 as unpatentable over Fruland,
Tidemand, Jackson, and Bange; (b) claims 8, 10, and 28 as unpatentable
over Fruland, Tidemand, Jackson, and Libbus; (c) claims 13, 14, and 17 as
unpatentable over Fruland, Ti demand, Jackson, and Spadgenske; and, ( d)
claim 29 as unpatentable over Fruland, Tidemand, Jackson, and Ries
Each of claims 8-10, 13, 14, 17, and 24--29 depend directly or
indirectly from claim 7. The Examiner does not employ the additional
references to Bange, Libbus, Spadgenske, or Ries in a way that cures
the defect discussed above. See Final Act. 6-12. Accordingly, we
likewise reverse their rejections.
DECISION
The Examiner's rejections of claims 7-15, 17, and 21-29 is reversed.
REVERSED
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