Vanessa Tolosa et al.

Patent Trials and Appeals Board

Jan 2, 2020

15637995 - (D) (P.T.A.B. Jan. 2, 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.
15/637,995 06/29/2017 Vanessa Tolosa IL-12532B 1074
24981 7590 01/02/2020
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
PROCTOR, CACHET I
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VANESSA TOLOSA, SATINDERPALL S. PANNU,
HEERAL SHETH, ANGELA C. TOOKER, KEDAR G. SHAH, and
SARAH H. FELIX
Appeal 2019-001895
Application 15/637,995
Technology Center 1700
BEFORE BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
FRANKLIN, 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. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Lawrence
Livermore National Security, LLC and the United States of America as
represented by the Department of Energy. Appeal Br. 2.
Appeal 2019-001895
Application 15/637,995

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
Claim 1. An implantable device, comprising:
a cylindrical base, wherein said cylindrical base has a
cylindrical base surface providing a base surface level and a
protective coating over said cylindrical base surface providing a
protective coating level above said base surface level;
four in-line electrode sensors on said cylindrical base
surface, wherein said four in-line electrode sensors are
longitudinally aligned on said cylindrical base surface
and wherein said four in-line electrode sensors are located at
said base surface level below said protective coating level;
four individual electrically conducting leads on said
cylindrical base surface at said base surface level below said
protective coating level, wherein each individual electrically
conducting lead has
a lead body portion that is longitudinally aligned on said
cylindrical base surface but offset from said longitudinally
aligned electrode sensors,
wherein each individual electrically conducting lead has
a lead connecting portion that is curved from said longitudinally
aligned lead body portion so that said lead connecting portion is
connected to one of said electrode sensors, and wherein
said electrically conducting lead has a feature size of <10
micrometers, and
four individual openings in said protective coating,
wherein there is one of said individual openings located above
one of said in-line electrode sensors enabling said inline
electrode sensors to be exposed through said protective coating.

Appeal 2019-001895
Application 15/637,995

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Swanson ‘172 US 8,099,172 Jan. 17, 2012
Jaax US 2008/0206165 A1 Sept. 14, 2006
McMorrow US 2010/0114278 A1 May 6, 2010
Swanson ‘659 US 2011/0072659 A1 Mar. 31, 2011

REJECTIONS
1. Claims 1–3 are rejected under pre-AIA 35 U.S.C. §103(a) as
being unpatentable over Swanson ‘659 in view of Swanson ‘172 and
McMorrow.
2. Claim 4 is rejected under pre-AIA 35 U.S.C. §103(a) as being
unpatentable over Swanson ‘659 in view of Swanson ‘172 and McMorrow,
as applied to claim 1 above, and further in view of Jaax.

OPINION
For purposes of this appeal, we address separately argued claims, and
the remaining claims stand or fall with the argued claims, consistent with
37 C.F.R. § 41.37(c)(1)(iv) (2017). We select claim 1 as representative.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal for the reasons set forth
Appeal 2019-001895
Application 15/637,995

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in the Final Office Action and in the Answer (which we adopt as our own),
and affirm, with the following emphasis.
We refer to pages 5–14 of the Appeal Brief and to pages 2–9 of the
Reply Brief regarding Appellant’s stated position in the record. We are
unpersuaded by such arguments for the reasons provided on pages 6–7 of the
Answer, and additional reasons set forth here. We agree with the Examiner
that because Appellant essentially argues the references individually, the
arguments are unpersuasive of error. The test for obviousness is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art; one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); In re Merck &
Co., 800 F.2d 1091, 1097–98 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425 (CCPA 1981). Each reference must be read for what it fairly teaches in
combination with the prior art as a whole. In re Merck & Co., 800 F.2d at
1097.
We also agree with the Examiner, for the reasons set forth on pages
6–7 of the Answer, that there would have been a reasonable expectation of
success in making the proposed combination for the reasons stated therein.
We thus affirm Rejection 1. We also affirm Rejection 2 for the same
reasons we discussed for Rejection 1 because Appellant relies upon similar
arguments (Appeal Br. 15–24).
CONCLUSION
We affirm the Examiner’s decision.
Appeal 2019-001895
Application 15/637,995

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3 103 Swanson ‘659,
Swanson ‘172, and
McMorrow.

1–3
4 103 Swanson ‘659,
Swanson ‘172, and
McMorrow, Jaax.

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Overall
Outcome
1–4

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED