Ex Parte Brase et al

Patent Trial and Appeal BoardMar 14, 2016

13220332 (P.T.A.B. Mar. 14, 2016)

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. 13/220,332 08/29/2011 Randall L. Brase 1362009-2199.1 1576 50638 7590 03/15/2016 Boston Scientific Neuromodulation Corp. c/o Lowe Graham Jones 701 Fifth Avenue Suite 4800 Seattle, WA 98104 EXAMINER EVANISKO, GEORGE ROBERT ART UNIT PAPER NUMBER 3762 MAIL DATE DELIVERY MODE 03/15/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RANDALL L. BRASE, ROGER EVAN FURGANG, and ROBERT R. TONG ____________________ Appeal 2014-000819 Application 13/220,332 Technology Center 3700 ____________________ Before LYNNE H. BROWNE, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–8 and 10–21 under 35 U.S.C. § 103(a) as unpatentable over Sochor (US 7,736,191 B1, iss. June 15, 2010) and Kast (US 8,206,180 B1, iss. June 26, 2012).1 We have jurisdiction under 35 U.S.C. § 6(b). 1 In the Answer, the Examiner modifies the rejection by making findings with respect to Kast’s teachings and changing the reasoning in support of the rejection to include modifications based on these findings. See Ans. 7–8. Thus, we understand claims 1–8, 10–12, 15–19, and 21 to stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sochor and Kast. Appellants appear to share our understanding, as they present arguments pertaining to Appeal 2014-000819 Application 13/220,332 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to systems and methods for making and using connector assembly retainers for electrical stimulation systems. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A control module for providing electrical stimulation of patient tissue, the control module comprising: a control module housing having an outer surface; an electronic subassembly disposed in the control module housing; an electrical interface disposed along the outer surface of the control module housing, the electrical interface coupled to the electronic subassembly; a header disposed along the outer surface of the control module housing over the electrical interface, wherein the header defines a plurality of ports; a connector assembly retainer disposed in the header and coupled to the electrical interface, the connector assembly retainer having a first end, a second end, and a longitudinal axis, the connector assembly retainer comprising a plurality of channels each extending along the longitudinal axis of the connector assembly retainer, and a plurality of apertures defined at the second end of the connector assembly retainer such that each of the the new findings and the Examiner’s determination based thereon. See Reply Br. 9–15. We further note that the statement of the rejection on page 5 of the Final Action refers to claims 13, 14, and 20 “and in the alternative claims 16–19” as being rejected as unpatentable over Sochor. It is unclear what alternative the Examiner is referring to, as claims 16–19 are included in the grouping discussed supra or why claims 13, 14, and 20 were addressed separately from the other claims rejected as unpatentable over Sochor. However, in view of the modification of the rejection, this point is moot. As these claims depend from claim 1, we also understand claims 13, 14, and 20 to stand rejected based on the combined teachings of Sochor and Kast. Appeal 2014-000819 Application 13/220,332 3 plurality of apertures is aligned axially with a different one of the plurality of channels, wherein each of the plurality of ports defined in the header is aligned with a different one of the plurality of apertures defined at the second end of the connector assembly retainer; and a plurality of connector assemblies each configured and arranged for receiving a lead or lead extension, each of the plurality of connector assemblies releasably disposed in a different one of the plurality of channels of the connector assembly retainer, each of the plurality of connector assemblies comprising a connector housing defining a port at one end of the connector assembly, the port configured and arranged for receiving a portion of the lead or lead extension, a plurality of spaced-apart connector contacts permanently disposed in the port defined by the connector housing, the plurality of connector contacts each coupled to the electronic subassembly, wherein the plurality of connector contacts are configured and arranged to couple to terminals disposed on the lead or lead extension, and at least one solid, electrically-nonconductive spacer disposed between adjacent connector contacts of the plurality of connector contacts. DISCUSSION In the Final Rejection, the Examiner found that “Sochor discloses the claimed invention except for the spaced apart connector contacts permanently disposed in the port, along with the spacers.” Final Act. 4. The Examiner determined that: [i]t would have been obvious . . . to modify the implantable device housing as taught by Sochor, to have the connector contacts permanently disposed in the port, along with the spacers, since it would provide the predictable results of allowing the removable connector assemblies to be removed and replaced to fit different lead types and/or easily remove damaged Appeal 2014-000819 Application 13/220,332 4 connectors/spacers with the connector assemblies, and/or easily construct the implantable housing. Id. The Examiner further reasoned that “it has been held that the mere reversal or rearrangement of parts is prima facie obvious to one having ordinary skill in the art . . . and therefore it would have obvious to reverse/rearrange the contacts/spacers from the retainer to the connector assemblies.” Id. at 4–5. Appellants argued that “[i]t would not be obvious to modify the implantable device housing of Sochor to have the connector contacts permanently disposed in the connector assembly because to do so would change the principle of operation of Sochor.” Appeal Br. 11 (emphasis omitted). Appellants further argue that “[i]t would not be obvious to modify the implantable device housing of Sochor to have the connector contacts permanently disposed in the port of the connector assembly because Sochor teaches away from the modification proposed in the Final Office Action.” Id. at 17 (emphasis omitted). Rather than responding to Appellants’ arguments, the Examiner modifies the rejection in the Examiner’s Answer, introducing Kast, to show the “well-known use of contacts permanently disposed in the connector assembly.” Ans. 7. The Examiner finds that “Kast shows the contacts, 430, permanently disposed in assembly 43, 53, or 320 (figure 4B, 5B, or 5D), where the contacts are then [releasably] connected to the feedthroughs, 410.” Id. Based on these findings, the Examiner determines that: This modification provides the predictable results of allowing the removable connector assemblies to be removed and replaced with their connector contacts and spacers to allow other connector assemblies to be replaced to fit different lead types and/or easily remove damaged connectors/spacers with the connector assemblies, and/or easily construct the implantable Appeal 2014-000819 Application 13/220,332 5 housing. In addition, it provides for miniaturization of system components and higher density arrangements of components without sacrificing system reliability (e.g., col. 1, lines 39–47 of Kast). Ans. 7–8. Appellants contend that “Kast does not teach or suggest connector contacts permanently disposed in a connector assembly that is releasably disposed in a connector assembly retainer, as recited in claim 1.” Reply Br. 11. In support of this contention, Appellants note that “each of the cited portions of Kast referenced in the Examiner’s Answer disclose contacts that are permanently coupled to feedthroughs.” Reply Br. 11. Kast states: FIG. 4D illustrates the electrical coupling of each first part 411 of feedthrough member 410 to the corresponding electrical contact 430. FIG. 4D further illustrates contact 430 including an elongate electrical coupling receptacle 489, which is formed by a groove extending approximately parallel with a longitudinal axis 49 of contact 430; coupling receptacle 489 has a first portion 483, adapted to receive a connector element 400 of lead connector 42 (FIG. 4E), and a second portion 493, in which first part 411 of feedthrough member 410 extends and to which first part 411 is fixedly coupled, for example, via welding. Kast, col. 4, ll. 36–46 (emphasis). Thus, Appellants are correct. Accordingly, the Examiner’s finding that Kast discloses the “well-known use of contacts permanently disposed in the connector assembly” is in error. Ans. 7. We do not sustain the Examiner’s decision rejecting independent claim 1, and claims 2–8 and 10–21, which depend therefrom. DECISION The Examiner’s rejection of claims 1–8 and 10–21 is REVERSED. Appeal 2014-000819 Application 13/220,332 6 REVERSED