Ex Parte Viavattine et al

Patent Trial and Appeal Board

Aug 8, 2016

12024086 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/024,086 0113112008
27581 7590 08/10/2016
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
FIRST NAMED INVENTOR
Joseph J. Viavattine
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.
P00244l4.00/LG10126 8579
EXAMINER
PARK, LISA S
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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 JOSEPH J. VIAVATTINE, KEVIN R. AUFDERHAR,
PAUL B. AAMODT, and HAILIANG ZHAO
Appeal2015-002042
Application 12/024,086
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-19, 21-26, and 28. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 We cite to the Specification ("Spec.") filed Jan. 31, 2008; Final Office
Action ("Final Act.") mailed Nov. 22, 2013; Examiner's Answer ("Ans.");
and Appellant's Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify M as the real party in interest. App. Br. 1.
Appeal2015-002042
Application 12/024,086
BACKGROUND
The subject matter involved in this appeal relates to a battery intended
for use in an implantable medical device. Spec i-f 2. According to
Appellants' Specification, tabs extending from a battery's electrode plates
may inadvertently become bent during the assembly process. Id. at i-f 4.
Appellants teach that placing a spacer between respective tabs of adjacent
electrode plates "ensures tabs are not bent when a set of tabs are connected
during a subassembly process." Id. at i-f 23. Independent claims 1 and 13
illustrate the subject matter on appeal and are reproduced from the Claims
Appendix of the Appeal Brief as follows:
1. An electrode for a battery in an implantable medical
device comprising:
a first electrode element with a first tab extending
therefrom, the first tab comprising a bottom portion extending
from the first electrode element and a top end diametrically
opposed to the bottom portion;
a second electrode element with a second tab extending
therefrom, the second tab comprising a bottom portion
extending from the second electrode element and a top end
diametrically opposed to the bottom portion, wherein the top
end of each tab of the first electrode element and second
electrode element comprises a top edge having a defined profile
extending between two side regions; and
at least one spacer coupled to the first and second tabs,
the at least one spacer disposed between the first and second
tabs, wherein the at least one spacer comprises a bottom end
located towards the bottom portion of the first and second tabs
and a top end located towards the top end of the first and
second tabs and diametrically opposed to the bottom end of the
at least one spacer, wherein the at least one spacer does not fold
over a top end of the first tab or a top end of the second tab,
wherein the top end of the at least one spacer comprises a top
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Application 12/024,086
edge having a defined profile that is substantially the same as
the defined profile along the entire top edge of each of the first
and second tabs, wherein a weld or a coupling member is
provided along a portion of the defined profile of the tabs and
the plurality of spacers to provide electrical coupling thereof,
and further wherein the at least one spacer is conductive.
13. An electrode for a battery in an implantable medical
device comprising:
a first electrode element with a first tab extending
therefrom;
a second electrode element with a second tab extending
therefrom; and
a spacer coupled to the first and second tabs, the spacer
not folded over the first or second tabs, wherein the spacer is
conductive.
REJECTIONS
The Examiner maintained the following grounds of rejection: 3
I. Claims 1; 4--8; 11-19; 24; 25; and 284 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Zolotnik5 and Takayama. 6
II. Claims 3, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zolotnik, Takayama, and Viavattine.7
III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zolotnik, Takayama, Viavattine, and Aamodt. 8
3 Ans. 2-14; Final Act. 2-14.
4 Although the Examiner's caption of this ground of rejection omits claims
16-19, Ans. 2, these claims were particularly addressed and rejected in the
Examiner's obviousness analysis, Ans. 6.
5 US 7, 179,562 B2, issued Feb. 20, 2007 ("Zolotnik").
6 US 2006/0246350 Al, published Nov. 2, 2006 ("Takayama").
7 US 2007/0178383 Al, published Aug. 2, 2007 ("Viavattine").
8 US 7 ,335,440 B2, issued Feb. 26, 2008 ("Aamodt").
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Application 12/024,086
IV. Claims 23 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Zolotnik, Takayama, and Zhao.9
DISCUSSION
I
Claims 1, 8, 13, 24, and 25 are independent. With regard to Rejection
I, Appellants focus their arguments on claim 1. App. Br. 8-17. Claims 8,
13, 24, and 25 are separately argued, but solely on the basis of recitations
which also appear in claim 1, for which Appellants solely rely on the
arguments made in connection with claim 1. App. Br. 17-18. Appellants do
not separately argue any dependent claim. Id. generally. In accordance with
37 C.F.R. § 41.37(c)(l)(iv), we select claims 1 and 13 as representative and
decide the propriety of Rejection I based on the representative claims alone.
Claims 4--7, and 28 stand or fall with claim 1. Claims 8, 11, 12, 14--19, 24,
and 25 stand or fall with claim 13.
Claim 13
The Examiner found that Zolotnik discloses conductive spacers that
are provided between the tabs of adjacent electrode elements. Ans. 7.
Zolotnik's spacers are formed as an integrated pair of reinforcing strips
which may be folded over a tab to provide one reinforcing strip on either
side of the tab. Ans. 4 (referencing Zolotnik Fig. 2b). Acknowledging that
Zolotnik's folded spacer pair does not meet the recitation that the spacer is
"not folded over the first and second tabs," 10 the Examiner determined that it
9 US 7,544,220 B2, issued Jun. 9, 2009 ("Zhao").
10 Appellants introduced the quoted negative recitation by amendment on
Jan. 14, 2013. Whether that negative recitation constitutes new matter
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Application 12/024,086
would have been obvious to one skilled in the art to separate Zolotnik's
folded pair of spacers into individual spacers, each still positioned on either
side of the electrode tab. Ans. 7. In reaching that determination, the
Examiner relied on Takayama's disclosure of separate spacers provided
between battery electrode tabs, and Takayama's teaching that the disclosed
spacers advantageously suppress tab vibration and increase tab durability.
Id. (citing Takayama i-f 6, Fig. 9).
Appellants argue that separating Zolotnik's folded spacer into separate
parts would frustrate Zolotnik's electrode assembly process because the
spacers "would not be effectively held in position" relative to the tab. App.
Br. 11. We disagree. Zolotnik explains that the spacers serve as "metal
reinforcing strips" that are "respectively attached to the front and rear faces"
of an electrode element tab. Zolotnik col. 4, 11. 43--45. The metal strips may
be attached by welding. Id. at col. 2, 11. 40--41. Appellants do not point to
credible evidence or technical reasoning why Zolotnik;s folded connection
of paired spacers would have been critical to the spacers being welded or
otherwise fixed in place between respective tabs. Zolotnik's
characterization of the reinforcing strips forming a bent or folded clip as a
"preferred embodiment," id. at col. 4, 11. 45--48, is not inconsistent with the
conclusion that Zolotnik's folded arrangement is not critical.
relative to the originally filed Specification is a question of fact that is not
before us in this appeal, but should be carefully considered by the Examiner
in the event of further prosecution of this application. See Santarus, Inc. v.
Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012) ("Negative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation."); MPEP § 2173.05(i) ("The mere
absence of a positive recitation is not basis for an exclusion.").
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Appellants additionally argue that replacing Zolotnik's folded spacer
with Takayama's individual spacer would frustrate Zolotnik's purpose
because Takayama's spacer is insulating whereas Zolotnik's spacer is
conductive. App. Br. 11-13. That argument lacks persuasive merit. The
Examiner's obviousness determination was premised on modifying
Zolotnik's conductive spacers by separating spacer pairs into individual
spacer elements, not replacing them with the insulating spacers disclosed in
Takayama.
Appellants' additional argument, that "[t]here appears to be nothing
gained by eliminating the folded structure in Zolotnik," App. Br. 13, also is
unpersuasive. Appellants do not dispute the Examiner's articulated
reasoning that Takayama teaches advantages relating to vibration damping
and durability that would have been useful in Zolotnik. Nor do Appellants
dispute the Examiner's further reasoning that separating Zolotnik's
integrated spacers would permit a reduction of material used. Compare Ans.
21-22 with App. Br. generally. Thus, Appellants do not persuade us of
reversible error in the Examiner's identification of a reason to modify
Zolotnik's spacers in the manner stated in the ground of rejection.
Claim 1
With regard to claim 1, Appellants additionally argue that the
combined teachings of Zolotnik and Takayama do not meet that claim's
recitation that the spacer comprises "a top edge having a defined profile that
is substantially the same as the defined profile along the entire top edge of
each of the first and second tabs." App. Br. 9-10. Particularly, Appellants
contend that the noted recitation in claim 1 precludes Zolotnik's top-edge
notch. Id. at 9 (citing Zolotnik Fig. 1 lA). However, the notched spacer
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Application 12/024,086
design shown in Zolotnik' s Figure 11 A is an alternative embodiment.
Zolotnik col. 7, 11. 4---6 ("Attention is now directed to Fig. 1 lA, which shows
a modification of the clip previously shown in Figs. 3, 4, and 5.").
Zolotnik's Figs. 3, 4, and 5 depict spacers without the disputed notch.
Appellants further argue that Zolotnik's fold line cannot be characterized as
an edge, such that Zolotnik's folded spacer lacks a defined profile along the
top edge. As the Examiner correctly explained, Ans. 20, the ground of
rejection at issue involves separating Zolotnik's folded spacer elements into
their individual halves, in light of Takayama' s disclosure of individually
provided spacer elements. Zolotnik's spacers, modified in the manner which
the Examiner determined to be obvious, would not have a fold line.
Appellants' argument solely regards Zolotnik in isolation of the combined
teachings of the prior art relied upon, and for that reason is not persuasive.
For the reasons set forth in the Final Office Action, Examiner's
Answer, and above, we sustain Rejection I.
II-IV
Appellants do not separately contest the Examiner's findings in
connection with any of Rejections II-IV, other than an implicit reliance on
the arguments discussed above in connection with Rejection I. As such, we
sustain each of Rejections II-IV for the reasons set forth above in
connection with Rejection I.
DECISION
The Examiner's decision rejecting claims 1, 3-19, 21-26, and 28 is
affirmed.
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Appeal2015-002042
Application 12/024,086
No time period for taking any subsequent action in connection with
this appeal may be extended 37 C.F.R. § 1.136.
AFFIRMED
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