Medtronic, Inc.

Patent Trials and Appeals Board

Mar 27, 2020

14317092 - (D) (P.T.A.B. Mar. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/317,092 06/27/2014 Vadim A. Yakovlev C00001598.USU3 4922
27581 7590 03/27/2020
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS: MVC22
MINNEAPOLIS, MN 55112
EXAMINER
GATEWOOD, DANIEL S
ART UNIT PAPER NUMBER
1729
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VADIM A. YAKOVLEV and KENNETH MICHIE
____________

Appeal 2019-004048
Application 14/317,092
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, 8, and 10–12. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Medtronic, Inc. and Medtronic plc
as the real parties in interest. Appeal Br. 2.
Appeal 2019-004048
Application 14/317,092

2
BACKGROUND
The invention relates to a battery, such as may be used in connection
with an implantable medical device. Spec. 1. Claim 1 is the sole
independent claim on appeal and reads as follows:
1. A battery, comprising:
a case having a top end, a bottom end, and a plurality of
sides extending from the bottom to define a cavity;
a cover configured to enclose the top end of the case and
having a feedthrough pin;
an electrode assembly disposed within the cavity, the
electrode assembly having an anode, a cathode and an
electrolyte; and
an anode tab coupled to the anode and a cathode tab
coupled to the cathode, wherein the anode tab is electrically
coupled to the cover and the cathode tab is electrically coupled
to the feedthrough pin;
an anode weld joint formed at an intersection of the
anode tab to the cover such that the anode tab is welded to the
cover; and
a cathode weld joint formed at an intersection of the
cathode tab to the feedthrough pin such that the cathode tab is
welded to the feedthrough pin;
wherein at least a predefined width of the anode tab is
configured to overlap a segment of the cathode tab along a
plane that is perpendicular to a plane oriented along the bottom
end and perpendicular to the predefined width of the anode tab,
and further wherein the anode weld joint and the cathode weld
joint are located along the plane.
Appeal Br. 17–18 (Claims Appendix).

Appeal 2019-004048
Application 14/317,092

3
REJECTIONS
I. Claims 1, 2, 7, 8, and 10–12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kelm2 and Huang.3
II. Claim 3 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kelm, Huang, and Hokanson.4
III. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over
Kelm, Huang, and Zhao.5

OPINION
Rejection I: Obviousness over Kelm and Huang
Relevant to Appellant’s arguments on appeal, the Examiner finds that
Kelm’s Figure 17 depicts a battery having an anode tab 20 welded to a side
of case 220, and a cathode tab 70 welded to a feedthrough pin 233 that
extends through cover 230. Final Act. 6–7. We reproduce Kelm’s Figures
17 and 18 below.

2 US 5,486,215, issued January 23, 1996.
3 US 2013/0059197 A1, published March 7, 2013.
4 US 2006/0166088 A1, published July 27, 2006.
5 US 7,544,220 B2, issued June 9, 2009.
Appeal 2019-004048
Application 14/317,092

4

Figures 17 and 18 are perspective views showing electrode assemblies and
respective connection tabs in a battery case.

Acknowledging Kelm does not disclose providing a welded joint
between the anode tab and the cover portion of the case, the Examiner finds
that Huang teaches an anode connector tab welded to a cover plate in a
lithium ion battery. Final Act. 7. The Examiner determines it would have
been obvious to one of ordinary skill in the art to modify Kelm’s battery
construction by welding the anode tab to the case cover “in order to prevent
a short circuit.” Id.
Appellant argues that even if Kelm’s battery were modified in the
manner proposed by the Examiner, the resulting battery still would not meet
all the features of claim 1 because the references do not teach locating the
anode and cathode weld joints along the plane recited in claim 1. Appeal Br.
10. Appellant also argues the Examiner has not provided a rational
underpinning sufficient to support the obviousness determination.
Appellant’s arguments are persuasive.
Appeal 2019-004048
Application 14/317,092

5
Claim 1 requires, inter alia, that the anode and cathode tab weld joints
are located within a plane that is perpendicular to a bottom plane of the case
and perpendicular to a width of the anode tab. The recited orientation
advantageously permits simultaneous welding of the anode tab to the cover
and the cathode tab to the feedthrough pin, without manipulating the
feedthrough pin for purposes of welding. Spec. 14–15. The Examiner does
not present evidence or reasoning to support a finding that welding Kelm’s
anode tab 20 to cover 230 would have resulted in the recited orientation of
welds. To the contrary, Kelm specifies that there should be “no overlap
between the cathode tabs or between the anode tabs in order to facilitate
making the individual welded connections.” Kelm 7:1–3 (emphasis added).
Nor does the Examiner point to evidence in support of the finding that
one of ordinary skill in the art would have had a reason to modify the anode
tab weld location in Kelm to “prevent a short circuit.” See Final Act. 7. The
Examiner does not identify evidence of any potential for short circuiting in
Kelm’s battery or reasoning why the proposed change in weld location
would have addressed a short circuiting problem. Absent adequate
evidentiary support, the articulated obviousness rationale is conclusory.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
For the foregoing reasons, Rejection I as applied to claims 1, 2, 7, 8,
and 10–12 over Kelm and Huang is not sustained.

Appeal 2019-004048
Application 14/317,092

6
Rejections II and III: Claims 3 and 4
Each of claims 3 and 4 depends indirectly from claim 1 and, therefore,
includes all the features recited in claim 1. The Examiner does not rely on
either Hokanson or Zhao in a manner that would correct the deficiencies
identified above in connection with claim 1.
Accordingly, Rejections II and III as applied to claims 3 and 4,
respectively, are not sustained for the reasons given in connection with
Rejection I.

CONCLUSION
The Examiner’s decision rejecting claims 1–4, 7, 8, and 10–12 is
reversed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Reversed
1, 2, 7, 8,
10–12
103 Kelm, Huang 1, 2, 7, 8,
10–12
3 103 Kelm, Huang,
Hokanson
3
4 103 Kelm, Huang, Zhao 4
Overall
Outcome
1–4, 7, 8,
10–12

REVERSED