Medtronic, Inc.

Patent Trials and Appeals Board

May 22, 2020

2019006118 (P.T.A.B. May. 22, 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.
14/822,763 08/10/2015 Reginald D. Robinson 1123-127US01/
C00004182.US
3534
71996 7590 05/22/2020
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
WU, TONG E
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/22/2020 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):
pairdocketing@ssiplaw.com
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 REGINALD D. ROBINSON, MARY E. ROBISCHON,
RODNEY J. HABERLE, GERALD G. LINDNER,
DON A. RUTLEDGE, and JASON R. SIMONEAU
____________

Appeal 2019-006118
Application 14/822,763
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–3, 8, 10–13, 21–23. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM and designate our affirmance as a new grounds of
rejection pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Medtronic, Inc. as the Applicant and
real party in interest. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to medical leads used for electrical
stimulation therapy. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. An implantable medical device assembly comprising:
a sealed housing;
a motor within the sealed housing, the motor including a
rotating output shaft;
a first coaxial shaft within the sealed housing, the first
coaxial shaft being mechanically coupled to the rotating output
shaft such that rotation of the rotating output shaft drives
rotation of the first coaxial shaft;
a second coaxial shaft external to the sealed housing, the
second coaxial shaft being in axial alignment with the first
coaxial shaft, the first and second coaxial shafts defining an
axis;
an oscillating component mechanically coupling the first
coaxial shaft to the second coaxial shaft, wherein rotation of the
rotating first coaxial shaft drives the oscillation of the
oscillating component, and wherein the oscillation of the
oscillating component drives rotation of the second coaxial
shaft; and
a flexible seal that surrounds at least a portion of the second
coaxial shaft in a plane perpendicular to the axis, the flexible
seal including a metal bellows and the oscillating component, a
first end of the metal bellows fixedly secured to the sealed
housing and a second end of the metal bellows fixedly secured
to the oscillating component such that the second end of the
metal bellows oscillates with the oscillating component,
wherein the implantable medical device assembly is
configured such that the metal bellows substantially prevents
the oscillating component from rotating,
wherein the sealed housing and the flexible seal combine to
form a hermetically sealed enclosure encasing the motor and
the first coaxial shaft.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Powers US 4,767,396 Aug. 30, 1988
Leclaire US 5,178,024 Jan. 12, 1993
Quarre US 6,806,595 B2 Oct. 19, 2004
Rezai US 2005/0075681 A1 Apr. 7, 2005
Flaherty US 2010/0023021 A1 Jan. 28, 2010
The following rejections are before us for review:2
1. Claims 1–3, 8, 10, 12, 13, 21, and 23 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Rezai, Powers, and Leclaire.
2. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable
over Rezai, Powers, Leclaire, and Flaherty.
3. Claim 22 is rejected under 35 U.S.C. § 103 as being unpatentable
over Rezai, Powers, Leclaire, and Quarre.
OPINION
Unpatentability of Claims 1–3, 8, 10, 12, 13, 21, and 23
over Rezai, Powers, and Leclaire
Claim 1
The Examiner finds that Rezai discloses the invention substantially as
claimed except for: (1) specifics regarding the motor, for which the
Examiner relies on Powers, (2) hermetic sealing of the motor, which the
Examiner considers to be obvious, and (3) a flexible metal seal/bellows, for

2 A rejection under the written description requirement of 35 U.S.C. § 112(a)
has been withdrawn by the Examiner. Ans. 3.
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which the Examiner relies on Leclaire. Non-Final Act. 5–7. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Rezai with the teachings of Powers
and Leclaire to achieve the claimed invention. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
maintain separation of body fluids from the motor using suitable materials.
Id. at 7.
Appellant argues that Rezai lacks certain elements of claim 1, a point
already conceded by the Examiner. Appeal Br. 7–9. This argument, without
more, is not sufficient to apprise us of Examiner error as it is well settled
that non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellant next argues that the Examiner has failed to establish a
reason for one of ordinary skill to modify Rezai with the teachings of
Powers. Appeal Br. 9. According to Appellant, Powers is directed to a
centrifuge that is located external a patient. Id.
The Examiner has failed to establish that one of ordinary skill
in the art would have found it obvious to modify a device
configured to stimulate tissue of the brain of a patient with a
plurality of delivery structures that are insertable within the
brain of patient, such as that describes by Rezai, with a
centrifuge apparatuses [sic] that is designed to separate
biological fluids such as blood external to a patient.
Id. at 9–10. Appellant considers the Examiner’s modification of Rezai by
Powers as entailing impermissible hindsight reconstruction. Reply Br. 5.
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In response, the Examiner takes the position that, to the extent that
Rezai may actually lack an explicit teaching of a fluid-tight seal, a person of
ordinary skill in the art would recognize that such posed a problem and
would be motivated to fix it. Ans. 6–8.3 The Examiner relies on Powers as
teaching that it is known to transfer rotational motion to oscillation motion
and vice-versa. Id. at 8. The Examiner further relies on Powers as teaching
that it is known to place a flexible boot to seal between two environments
and to show that it is desirable to enclose a motor. Id. With respect to
Appellant’s argument that Powers is directed to a centrifuge, the Examiner
explains that the rejection relies only on the motion transfer mechanism and
motor enclosure of Powers without regard to the particular load that is
driven by the output shaft, namely, the centrifuge. Id. at 8–9. The Examiner
further notes that Leclaire also teaches a motion transfer mechanism
involving rotating shafts coupled by oscillating members that also includes a
flexible boot/bellows to seal between two environments. Id. at 9.
In reply, Appellant argues that Rezai is related to an entirely different
technical field from that of Powers. Reply Br. 5. Appellant argues that a
person of ordinary skill in the art would have looked to other implantable
medical devices, rather than Powers’ centrifuge, to improve Rezai. Id. at 6.
Appellant further argues that Powers’ motor is used for an “entirely different
purpose” than that proposed by the rejection. Id. at 5. Appellant also

3 Although Rezai may be silent on the existence of a seal, such does not
necessary conclusively establish that a skilled artisan would understand that
Rezai would be practiced without a seal. It is well settled that a patent need
not teach, and preferably omits, what is well known in the art. Streck, Inc. v.
Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed. Cir. 2012). As
appropriately explained by the Examiner, it is common, well-known, and,
indeed, required to provide seals for medical implant devices. Ans. 32.
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disputes the Examiner’s finding that a person of ordinary skill in the art
would recognize the need for a fluid-tight seal and, thus, would have been
motivated to fix the problem. Id. 7.
Rezai is directed to a neural stimulation delivery device that includes,
among other things, deep brain stimulation. Rezai, Abstract, ¶ 7. Rezai
defines a plurality of ports along a longitudinal axis. Id. ¶ 7. Rezai discloses
delivery structures inserted into a body that are independently moveable
through said ports. Id. Rezai depicts electrode 50 extending from port 30a
of body 20. Id. ¶¶ 41, 42, Figs. 3, 4A.
Powers is directed to a method and apparatus for processing biological
fluids by centrifugal separation. Powers, Abstract. Powers discloses a
method and means to convert rotary motion from an external drive motor so
as to avoid the problems associated with rotary seals. Id. col. 3, ll. 59–68.
As illustrated in Figure 1, drive motor 12 rotates shaft 2 which is rotatably
coupled to drive member 4 which features eccentric bore 7. Id. col. 4,
ll. 35–53; Fig. 1. Spaced apart from and opposite drive shaft 2 is driven
shaft 18. Id. Plate 3 is concentrically mounted on draft 18. Id. Plate 3
rotates about pin 5 disposed in eccentric bore 7 on plate 3. Id. Disposed
between driven shaft 18 and drive member 4 is coupling device 8. Id.
Cylindrical stud 8A protrudes on the lower, drive motor 12, shaft 2 side of
coupling device 8 and extends into eccentric bore 7 drive member 4.
Eccentric bore 7 is laterally offset from the respective rotational axes of
shafts 2 and 18. Id. In operation, rotary motion of drive shaft 2 is translated
into oscillating motion of device 8 and then back again into rotary motion of
shaft 18. Id. col. 4, ll. 60–65. Thus, coupling device 8 does not rotate, but
rather oscillates back and forth. Id.
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Powers discloses flexible boot 16, which is comprised of resilient,
impermeable materials, such as silicone or rubber. Id. col. 4, ll. 66–67.
Boot 16 is disposed between and separates drive member 4, shaft 2, and
drive 12 on its lower side from alignment base 6 and driven shaft 18 on its
upper side. Id. col. 4, l. 66 – col. 5. l. 1. Boot 16 forms a flexible, fluid-tight
enclosure about the periphery of coupling device 8 and the opening for
driven shaft 18. Id. col. 5, ll. 1–4. Powers’ motor 12, shaft 2, drive
member 4, coupling device 8, flexible boot 16, and alignment base 6 are
enclosed in the lower half of plastic envelope 20, which is labeled as
element 20L. Id. Fig. 1. Lower half 20L is joined to upper half 20U by
flanges 20F. Id. col. 5, ll. 15–19.
Powers thus demonstrates that it was known in the prior art to create a
fluid tight seal between first and second rotating shafts by interposing an
oscillating member between the two rotating shafts and converting rotation
of the first shaft to oscillating motion and then converting such oscillating
motion to rotation of the second shaft. By eliminating rotational motion at
the location of the oscillating member, a fixed seal can be used to separate
the environment of the first shaft from the environment of the second shaft.
This arrangement obviates known problems related to the use of rotational
seals. Powers, col. 3, ll. 59–68.
The Examiner proposes to use the teachings of Powers to modify
Rezai so that fluid having access to Rezai’s port 30a can be isolated from the
motor, gear, and clutch assembly within body 20. Rezai, Figs. 3, 4A–D.
Non-Final Act. 5–8. Appellant challenges the Examiner’s proposed
combination and modification of the prior art.
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Appellant’s argument that Rezai and Powers would not have been
combined because Rezai is “related to an entirely different technical field” is
unpersuasive. Reply Br. 5. A reference qualifies as prior art for an
obviousness determination when it is analogous to the claimed invention.
Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed.
Cir. 2011). In the instant case, Appellant expressly disclaims relying on a
non-analogous art theory. Reply Br. 5.
Appellant’s position is not that Powers constitutes
nonanalogous art on the basis that Powers is not in the same
field of endeavor as Appellant's claim 1 nor reasonably
pertinent to the particular problem with which Appellant was
concerned.
Id. (emphasis added).
The Supreme Court instructs us to take an expansive and flexible
approach in determining whether a patented invention was obvious at the
time it was made. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415
(2007). The existence of a reason for a person of ordinary skill in the art to
modify a prior art reference is a question of fact. See In re Constr. Equip.
Co., 665 F.3d 1254, 1255 (Fed. Cir. 2011). A reason to modify a prior art
reference may be found explicitly or implicitly in market forces; design
incentives; the “interrelated teachings of multiple patents”; “any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent”; and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550
U.S. at 418–21).
In the instant case, Appellant, first of all, argues that person of
ordinary skill in the art would not have recognized a problem in Rezai with
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potential infiltration of brain fluids. Reply Br. 4. “[T]he Examiner has
failed to identify any reference that even recognizes the existence of such a
problem.” Id. Generally, it may be true that, in a proper case, a patentable
invention may lie in the discovery of the source of a problem even though
the remedy may be obvious once the source of the problem is identified. In
re Sponnoble, 405 F.2d 578, 585 (CCPA 1969). However, it does not
necessarily follow that the Examiner is required to cite to a prior art
reference that expressly identifies a problem that requires a solution. An
artisan must be presumed to know something about the art apart from what
the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962).
Here, the Examiner provides us with an insightful and cogent
explanation as to a possible deficiency in Rezai regarding fluid infiltration.
Ans. 6–7.
[T]he retractable/ extendable lead moves in and out of a hole . . .
in the main body of the lead. It is an incontrovertible fact that a
hole naturally and inherently offers a two-way path of ingress
and egress to whatever is present on either side of the hole (in
this instance, the brain tissue environment and the motor
environment). Therefore, based on Rezai’s disclosed design
(which has a component moving in and out of a hole), and the
fact that a hole naturally allows bidirectional contamination,
Examiner reasoned that one of ordinary skill in the art would be
motivated to address the issue of how to bridge the mechanical
connection between a motor/ gears and the actual retractable lead
while maintaining separation between the motor environment
and the brain tissue environment.
Id. at 7. In short, the Examiner finds that a person of ordinary skill in the art
would have recognized that fluid migrates through a hole and, therefore,
would be motivated to seal the hole. Id. The Examiner later finds that
hermetic sealing is well-known and commonly desired in implantable
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medical devices. Id. at 32–35 (citing non-applied art). Appellant offers
neither evidence nor persuasive technical reasoning to rebut this finding,
relying, instead, on naked, unsubstantiated attorney argument, which we find
unpersuasive. Implicit in Appellant’s argument is the suggestion that a
person of “ordinary” skill is relatively “unskilled” so as to be unaware of
something as fundamental as contamination in a medical environment. Such
does not comport with prevailing law. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421.
The instant case arises in the field of implantable medical devices which, by
their very nature, are invasive. A practitioner in this field would have
undoubtedly been aware of hazards related to cross-contamination, i.e., (1)
contamination to the human body originating from the outside environment
(including the medical instrument); and (2) contamination to an implanted
medical device originating from sources within the body. Appellant,
moreover, offers no convincing explanation as to why Powers recognized a
problem with fluid migration in centrifuges, but a practitioner in brain
implants would not have been unaware of a similar problem at the time of
the invention.
Having determined that a person of ordinary skill in the art would
have recognized the problem to be solved, we turn to whether a practitioner
would have had a reason to apply the teachings of Powers to solve the fluid
migration problem in Rezai. In the rejection, the Examiner gives a cogent
reason, namely, to maintain separation of body fluids from the motor. Non-
Final Act. 7. This is sufficient reason to support the rejection. See In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
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underpinning) cited with approval in KSR, 550 U.S. at 418. This also
obviates Appellant’s hindsight argument. In re Cree, Inc., 818 F.3d 694,
702 n.3 (Fed. Cir. 2016). Moreover, it is well settled that if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. KSR, 550 U.S. at 417. A person of ordinary skill in the art would
have recognized that Powers’ teaching of a sealing technique involving
rotation to oscillation to rotation, so as to avoid use of a rotational seal and
its accompanying problems, has broad application beyond use in centrifuge
devices.
Appellant’s argument that Powers uses a motor for a different purpose
than extending a brain stimulation electrode is unpersuasive. Motors are
ubiquitous and are known to be used for a wide variety of purposes. It is
common sense that familiar items may have obvious uses beyond their
primary purposes, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle. KSR, 550 U.S.
at 420. Consequently, “[a] reference may be read for all that it teaches,
including uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322,
1331 (Fed. Cir. 2012), citing KSR, 550 U.S. at 418–21.
Appellant next argues that Powers does not completely seal the entire
motor. Appeal Br. 10. In response, the Examiner points out that Powers
discloses a lower skirt that does form a seal.
It is not reasonable to say that Powers fails to disclose any
seal around the motor whatsoever, because one of ordinary skill
in the art would recognize that the lower skirt of the enclosure,
directly contacting and bolted to the base plate, and explicitly
described as forming an enclosure such that there are “no
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exposed rotating parts,” does form a seal. Thus, Powers does
show at least a substantially sealed enclosure.
Ans. 31; see also id. at 26 (Powers teaches a substantially sealed motor
enclosure but not one that is hermetically sealed). The Examiner further
finds that hermetic sealing is well-known and commonly desired in
implantable medical devices. Id. at 32–35 (citing non-applied art). In reply,
Appellant reiterates its position from the Appeal Brief. Reply Br. 10.
Powers discloses a fixed plastic envelope 20 that is “air-tight.”
Powers, col. 5, ll. 5–17. Plastic envelope 20 includes lower portion 20L that
envelopes the motor. Id. Fig. 1. However, there is more to the rejection
than whether Powers expressly teaches providing a hermetic seal around the
motor. The Examiner actually finds that, in addition to what Powers
explicitly teaches, it would have been obvious to enclose the motor in a
hermetically sealed environment, noting that a hermetic seal is “commonly
desired” when implanting medical devices. Non-Final Act. 7. In the
Answer, the Examiner cites to non-applied art demonstrating that hermetic
sealing is commonly considered a requirement for implantable medical
devices. Ans. 32–35. There is sufficient evidence in the record to support
the Examiner’s finding that the motor is closed and sealed and/or that it
would have been obvious to modify the prior art to do so.
Appellant next argues Rezai’s device operates a plurality of electrodes
that extend and retract from a plurality of ports. Appeal Br. 10. Appellant
argues that Powers’ motor is not capable of independently operating each of
the plurality of extendable electrodes and, therefore, the Examiner proposed
modification would render Rezai unsuitable for its intended purpose. Id.
This argument is not persuasive. A person of ordinary skill in the art would
not read Rezai as limited to embodiments that necessarily include multiple
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electrodes. There is no limitation in claim 1 requiring that Appellant’s
invention operate more than one electrode. Claims App. Thus, Appellant’s
argument is not commensurate with the scope of the claim. Moreover,
merely omitting an element and its function in a combination where the
remaining elements perform the same functions as before involves only
routine skill in the art. In re Karlson, 311 F.2d 581, 584 (CCPA 1963).
Thus, it would have been obvious to practice Rezai’s invention with a single,
extendable electrode. Such an embodiment would still provide brain
stimulation and, therefore, would not have been rendered unsuitable for its
intended purpose as argued by Appellant.
Next, Appellant argues that Powers’ flexible seal does not surround a
portion of the second coaxial shaft “in a plane perpendicular” to the axis of
such shaft. As can be readily seen from viewing Figure 15 of Appellant’s
disclosure and comparing to Figure 1 of Powers, Appellant’s argument
merely relates to relative dimensions and shapes of the flexible seal vis-à-vis
the second shaft. Compare Fig. 15; Powers, Fig. 1. The Examiner provides
annotated variations of Powers, Figure 1, illustrating what the Examiner
considers to be obvious modifications of Powers that would satisfy this
relative dimensional limitation. Ans. 41. In the case of Ex parte Dailey, 357
F.2d 669 (CCPA 1966), an applicant attempted to distinguish over the prior
art by arguing a limitation directed to the geometric shape of a container. In
upholding the Board’s affirmance of the Examiner’s rejection, the court
found that the applicant presented no argument that convinced the court that
the particular configuration of the container is significant or is anything
more than one of numerous configurations that an artisan would find
obvious to achieve a required result. Id. at 672–73.
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What is altogether missing from Appellant’s presentation is any
analysis, evidence, or technical reasoning as to why Appellant’s shape and
dimensional variation of the flexible boot vis-à-vis the second shaft
constitutes a critical feature of the clamed implantable medical device that
functions differently than the prior art. Section 103 contemplates that there
may be differences between the prior art and the claimed invention and yet
the claimed invention may not be patentable. 35 U.S.C. § 103. Appellant’s
shape and dimensioning of the flexible seal relative to an upper point of
attachment so as overlap the second shaft in a perpendicular plane is a
predictable variation of Powers. See KSR, 550 U.S. at 417 (explaining that
Section 103 bars the patentability of predictable variations of the prior art);
Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1347 (Fed. Cir. 1984)
(finding certain dimensional limitations to be “essentially meaningless” and
“window dressing,” having no significance to the operation of the claimed
invention).
Finally, Appellant argues that claim 1 requires three rotating shafts
and that Powers discloses only two shafts. Appeal Br. 11. Appellant points
out that claim 1 requires the motor output shaft to be mechanically coupled
to the first of the two claimed co-axial shafts. Id., Claims App.
In response, the Examiner finds that Powers’ motor has its own
separate output shaft that is coupled to a separate coaxial shaft. Ans. 28
(quoting Non-Final Act. 6). The Examiner finds that an inherent disclosure
of a separate shaft should be inferred from reading col. 4, lines 35–36 of
Powers. Id. The referenced passage of Powers reads as follows:
In the apparatus of the drawing, a rotary drive motor 12 is
coupled to a drive shaft 2, preferably aligned with the bowl axis
A. Shaft 2, in turn, is rotationally coupled to cylindrical rotary
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drive member 4. Cylindrical rotary drive member 4 has an
eccentric bore 7 extending to surface 7A.
Powers, col. 4, ll. 35–36. Figure 1 of Powers depicts drive motor 12. Id.
Fig. 1. The motor is depicted as a black box. Id. Powers is silent as to the
internal workings of this black box. All we can actually see in the drawing
is shaft 2 extending out of the black box. Id. While it may be possible that
Powers contemplates an additional shaft and associated gearing relationship
inside this black box, we are not convinced that such is necessarily so, which
is required to support a finding of inherency. It is well settled that inherency
may not be established by probabilities or possibilities. In re Oelrich, 666
F.2d 578, 581 (CCPA 1981). Thus, the mere fact that a certain thing “may”
result from a given set of circumstances is not sufficient. Id. “The very
essence of inherency is that one of ordinary skill in the art would recognize
that a reference unavoidably teaches the property in question.” Agilent
Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). The
Examiner’s finding and analysis is insufficient, in our opinion, to support a
finding of inherency.
However, our disagreement with the Examiner over inherency does
not end our inquiry. The Examiner’s rejection is under Section 103 and thus
raises the question of whether it would have been obvious to incorporate an
additional shaft and gearing relationship in the proposed combination of
prior art references. It is well settled that a claim can be obvious even where
all of the claimed features are not found in specific prior art references,
where there is a showing of a reason to modify the teachings of the prior art
to achieve the claimed invention. See Randall Mfg. v. Rea, 733 F.3d 1355,
1361–62 (Fed. Cir. 2013); see also Broadcom Corp. v. Emulex Corp., 732
F.3d 1325, 1334 (Fed. Cir. 2013). For this reason, “we do not ignore the
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modifications that one skilled in the art would make to a device borrowed
from the prior art.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382
(Fed. Cir. 2007).
Practitioners in the mechanical arts are familiar with the use of
motors, rotating shafts, and gears. This is the whole idea behind the
transmission in a motor vehicle. As anyone who has ridden a bicycle can
attest, providing a gearing relationship between rotating shafts can produce a
useful mechanical advantage and/or an increase or reduction in rotational
speed. Such well-known benefits from gearing and associated gear ratios
provide an obvious and self-evident reason as to why a practitioner
designing an implant device that converts rotational motion from a motor to
linear motion to extend a brain stimulation electrode would have considered
it obvious, at the time of Appellant’s invention, to modify Powers and Rezai
with an additional rotating shaft and associated gearing. In the instant case,
Appellant provides no persuasive evidence, technical reasoning, or argument
as to why mechanically coupling shaft 604 to shaft 610 of Appellant’s
device via gearing 606, 608 requires more than ordinary skill or produces
unexpected results. The Specification merely describes motor output
shaft 604 being mechanically coupled to gear 606, which drives gear 608,
which is coupled to coaxial shaft 610, without any indication that this feature
provides unexpected results or criticality. Spec. ¶ 133. We conclude that it
would have been obvious, at the time of the invention, to incorporate an
additional rotating shaft and gearing as claimed in claim 1. Rezai itself
provides teachings and suggestions in this regard. Rezai teaches that control
mechanism 100 may include a gear and clutch assembly within body 20 as
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described in U.S. Patent Nos. 5,606,975 (Liang) and 5,034,004 (Crankshaw),
both of which reference teachings are incorporated into Rezai. Rezai ¶ 55.
Crankshaw teaches an offset motor shaft (e.g., at worm gear 53) and
gears 55, 56, 60 connecting the motor shaft to coaxial shafts (e.g., the shaft
supporting output reduction gear 60 and the shaft/drive head 61 positioned at
the output of sprag clutch 62) similar to Appellant’s Figure 15 embodiment
and its motor output shaft 604 connected by gears 606, 608 to first coaxial
shaft 610 at an input side of oscillator with a second coaxial shaft 640 at an
output side of the oscillator. Crankshaw teaches this arrangement of
motor 28 and gears 56, 55, 60 “enables highly accurate and rapid positioning
of the drive system and therefore highly accurate and fast operation of the
infusion pump [but] other forms of motor may be used to achieve acceptable
results.” Crankshaw, col. 6, ll. 3–40, Fig. 3; see also Non-Final Act. 5–6
(citing Rezai ¶ 55 where Rezai incorporates by reference this teaching of
Crankshaw).
We determine that it would have been obvious to include this feature
of Crankshaw in Rezai (to the extent that it is not incorporated by reference
already) to improve Rezai’s device similarly by enabling the very accurate
placement of a medical lead (delivery structure 40) as Rezai desires to do.
We have considered Appellant’s remaining arguments and find them
to be without merit. We sustain the Examiner’s unpatentability rejection of
claim 1. However, because the underlying findings and rationale for our
decision with respect to the rotating shaft and gearing issue differs from that
of the Examiner as expressed in the Non-Final Action and Answer, we
designate our affirmance as a NEW GROUND OF REJECTION in order to
Appeal 2019-006118
Application 14/822,763
18
provide Appellant with a full and fair opportunity to react to the thrust of the
rejection. In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013).
Claims 2, 3, 8, 12, 21, and 23
Appellant does not argue for the separate patentability of these claims
apart from arguments presented with respect to claim 1 which we have
previously considered. Consequently, we sustain the Examiner’s rejection
of claims 2, 3, 8, 12, 21, and 23. See 37 C.F.R. § 41.37(c)(1)(iv) (failure to
separately argue claims constitutes a waiver of arguments for separate
patentability).
Claim 10
Claim 10 depends from claim 1 and adds the limitation:
further comprising a mechanically adjustable medical lead,
the mechanically adjustable medical lead including a rotatable
member mechanically connected to a distal end of the second
coaxial shaft,
wherein operation of the motor to rotate the second coaxial
shaft rotates the rotatable member of the mechanically
adjustable medical lead to move a position of an electrode of
the mechanically adjustable medical lead to adjust a spacing
between a proximal end of the medical lead body and the
electrode.
Claims App. Appellant argues that this limitation is not met by the prior art.
Appeal Br. 20–21, Reply Br. 15–16. However, Appellant argues Rezai
without taking into account how Rezai is modified by Powers. Id. Thus,
Appellant’s argument fails to apprise us of Examiner error. We sustain the
Examiner’s unpatentability rejection of claim 10.
Claim 13
Claim 13 is an independent claim that is substantially similar in scope
to claim 10, which depends from claim 1. Claims App. In traversing the
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Application 14/822,763
19
rejection, Appellant relies on the same arguments that we previously
considered and found unpersuasive with respect to claims 1 and 10 and find
equally unpersuasive here. Appeal Br. 16–17. We sustain the rejection of
claim 13.
Unpatentability of Claim 11
over Rezai, Powers, Leclaire, and Flaherty
Appellant does not argue for the separate patentability of claim 11, the
rejection of which is hereby sustained. See 37 C.F.R. § 41.37(c)(1)(iv)
(failure to separately argue claims constitutes a waiver of arguments for
separate patentability).
Unpatentability of Claim 22
over Rezai, Powers, Leclaire, and Quarre.
Appellant does not argue for the separate patentability of claim 22, the
rejection of which is hereby sustained. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
§ References Aff’d Rev’d New Ground
13, 8, 10, 12,
13, 21, 23
103 Rezai, Powers,
Leclaire
1-3, 8, 10, 12,
13, 21, 23
11 103 Rezai, Powers,
Leclaire, Flaherty
11
22 103 Rezai, Powers,
Leclaire, Quarre
22
Overall
Outcome
11, 22 1-3, 8, 10, 12,
13, 21, 23

Appeal 2019-006118
Application 14/822,763
20
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; 37 C.F.R. 41.50(b)