Ex Parte Chen et al

Patent Trial and Appeal BoardMay 14, 2018

14209799 (P.T.A.B. May. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/209,799 03/13/2014 71996 7590 05/16/2018 SHUMAKER & SIEFFERT, P.A 1625 RADIO DRIVE, SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR Xingfu Chen 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. 1123-094US01/P41397.USU2 3147 EXAMINER LEVICKY, WILLIAM J ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 05/16/2018 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 XINGFU CHEN, BERNARD Q. LI, RICHARDT. STONE, DALE F. SEELEY, and ALAN SHI 1 (APPLICANT: Medtronic, Inc.) Appeal2017-005553 Application 14/209, 799 Technology Center 3700 Before JEFFREY N. FREDMAN, JOHN G. NEW, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to a medical device system. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 According to Appellants, the real party in interest is Medtronic, Inc. of Minneapolis, Minnesota, and Medtronic plc of Dublin, Ireland, the ultimate parent entity of Medtronic, Inc. (Appeal Br. 3.) Appeal2017-005553 Application 14/209,799 STATEMENT OF THE CASE Background "Medical electrical stimulation devices ... may deliver electrical stimulation therapy to a patient via implanted electrodes .... an electrical stimulation device may include an implantable electrical stimulation generator and one or more implantable leads carrying electrodes." (Spec. ii 3.) Claims on Appeal Claims 1-6, 8-10, 21, and 22 are on appeal. (Claims Appendix, Appeal Br. 21-23.) Claim 1, the only independent claim on appeal, is illustrative and reads as follows (emphasis added): Claim 1: A medical device system comprising: a lead including an electrically conductive lead wire; an electrode electrically coupled to the lead wire, the electrode including a first portion and a second portion, wherein the first portion defines an exposed outer surface of the electrode and is bonded to the second portion along a first interface, wherein the second portion is electrically and mechanically coupled to the lead wire along a second interface different from the first interface via welding to couple the lead wire to the electrode, wherein the medical device system is configured to conduct an electrical signal between the lead wire and exposed outer surface of the first portion via the second portion; and an electrically insulating material covering an outer surface of the second portion, and wherein the first portion is formed from a first material having a first composition, and the second portion is formed from a second material having a second composition different from the first composition. (Appeal Br. 21.) 2 Appeal2017-005553 Application 14/209,799 Examiner's Rejections 1. Claims 1, 2, 5, 6, 8, 10, 21, and 22 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Cole2 and McDonald. 3 (Final Act. 10-13.)4 2. Claims 3 and 4 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Cole, McDonald, and Zhou. 5 (Id. at 13.) 3. Claim 9 stands rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Cole, McDonald, and Janzig. 6 (Id. at 13-14.) DISCUSSION Issue Whether a preponderance of evidence of record supports the Examiner's rejections under 35 U.S.C. Â§ 103(a). Analysis The Examiner's rejections rely on Cole as teaching all of the limitations of claim 1, except that "Cole does not disclose further comprising an electrically insulating material covering the outer surface of the second portion."7 (Final Act. 11.) For example, the Examiner finds that Cole teaches a first portion 36 and a second portion 112 of an electrode, a wire or conductor 34 coupled to second portion 112, and wherein the first portion 36 2 Cole, US 7,856,707 B2, issued Dec. 28, 2010. 3 McDonald, US 2011/0130803 Al, pub. June 2, 2011. 4 Office Action dated April 21, 2016. 5 Zhou, US 7,666,523 B2, issued Feb. 23, 2010. 6 Janzig et al., US 2011/0270330 Al, pub. Nov. 3, 2011 ("Janzig"). 7 Claim 1 recites "an outer surface" not "the outer surface" of the second portion. (Appeal Br. 21.) 3 Appeal2017-005553 Application 14/209,799 defines an exposed outer surface of the electrode (id. at 10), as illustrated in Figures 18 and 19 of Cole: Figure 18 Figure 19 Figures 18 and 19 above illustrate a portion of a medical device lead. As for McDonald, the Examiner finds that: McDonald teaches that it is known to use an electrically insulating material covering the outer surface of the second portion such that the outer surface does not define an exposed surface of the second portion . . . as set forth in Figure 5 and Paragraph [0060] to provide reducing the risk of bums or other tissue damage. (Final Act. 11.) Figure 5 of McDonald is illustrated below: FIG. 5 4 Appeal2017-005553 Application 14/209,799 Figure 5 above illustrates an insulator 510 between an inner cylinder 300 and an outer cylinder 400. (McDonald i-f 61.) The Examiner concludes that: It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system as taught by Cole, with an electrically insulating material covering the outer surface of the second portion [112] such that the outer surface does not define an exposed surface of the second portion . . . since such a modification would provide the predictable results of reducing the risk of bums or other tissue damage. (Final Act. 11-12.) Appellants argue that the portion of McDonald cited by the Examiner "merely describes that the insulator 510 may be useful in electrically separating two adjacent cylinders. Nowhere does McDonald describe that the insulator 510 is provided between the inner cylinder 3 00 and outer cylinder 400 or otherwise to reduce the risks of bums or other tissue damage." (Appeal Br. 14.) Moreover, according to Appellants, "it appears that coupling 112 is describ[ed] by Cole as being in electrical contact with both the contact 36 and the conductor 34, the outer surface of coupling 112 and contact 36 forming an electrode surface." (Id. at 15.) We find that Appellants have the better position. Moreover, the Examiner bears the initial burden of establishing a prima facie case of obviousness and, on this record, has not done so. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In particular, the Examiner fails to provide a persuasive "reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 5 Appeal2017-005553 Application 14/209,799 The Examiner's rejection is premised on the positions that (1) "it would be known [based on McDonald's teachings] to at least partially cover an outer surface of Cole, portion 112, with an insulator which provides the predictable results of reducing the risk of bums or other tissue damage" (Advisory Action dated Aug. 3, 2016, at 4), and that (2) "covering portion 112 would force the current and temperature to spread to the surrounding area 36 instead of it primarily being dissipated in the region (112) directly adjacent to the conductor" (Ans. 4). While it may be true that covering an outer surface of Cole with an insulator would reduce the risk of bums or other tissue damage, and force current and temperature to spread to area 36, the Examiner points to no persuasive evidence that would suggest such a modification to the medical device system of Cole. As Appellants argue, there is "no description in McDonald that the insulator 510 is employed to cover an outer surface of an electrode to reduce the risk of bums or other tissue damage," and further that "the Examiner has failed entirely to provide any support for the conclusion that 'covering portion 112 would force the current and temperature to spread to the surrounding area 3 6 instead of it primarily being dissipated in the region (112) directly adjacent to the conductor."' (Reply Br. 4, 7.) Merely because of person of ordinary skill in the art could provide an insulating material to cover an outer surface of the second portion 112 of Cole, does not establish a persuasive reason that would have prompted a person of ordinary skill in the art to do so, particularly where Cole appears to be using portion 112 as an electrode surface without any indicated desire to insulate portion 112, and McDonald uses insulator 510 as an electrical insulator between inner and outer cylinders. See Belden Inc. v. Berk-Tek 6 Appeal2017-005553 Application 14/209,799 LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) ("obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention."). Accordingly, the rejection of independent claim 1 is reversed. The rejection of claims 2, 5, 6, 8, 10, 21, and 22, and the rejections of claims 3, 4, and 9, are reversed because all of those claims depend, directly or indirectly, from claim 1. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988). Conclusions of Law A preponderance of evidence of record fails to support the Examiner's rejections of claims 1-6, 8-10, 21, and 22 for obviousness. SUMMARY We reverse the rejections of all claims on appeal. REVERSED 7