Ex Parte Gerber et al

Patent Trials and Appeals Board

Jan 29, 2019

14331283 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/331,283 07/15/2014
64619 7590 01/31/2019
MEDTRONIC, INC. (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
FIRST NAMED INVENTOR
Martin T. Gerber
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.
134.07160102 7442
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
ptodocketing@mrgs.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 MARTIN T. GERBER and MICHAEL D. BAUDINO
Appeal 2018-005961 1
Application 14/331,283 2
Technology Center 3700
Before BRADLEY B. BAY AT, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, which are all the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed Nov.
13, 2017), Reply Brief ("Reply Br.," filed Apr. 13, 2018), the Examiner's
Answer ("Ans.," mailed Feb. 15, 2017), and the Final Office Action ("Final
Action," mailed June 13, 2017).
2 Appellants identify "Medtronic, Inc." as the real party in interest. App.
Br. 2.
Appeal2018-005961
Application 14/331,283
STATEMENT OF THE CASE
Sole independent claim 1
Appellants' claimed invention is directed to a system "for introducing
implantable medical leads into patients, particularly leads having distal
fixation elements." Spec. 1: 10-11. Claim 1 recites:
1. A system comprising:
an introducer including a body member having a
proximal end and a distal end, wherein the body member
defines a lumen extending from the proximal end to the distal
end·
' an implantable medical lead configured to be inserted in
the lumen of the introducer, the lead having a proximal end and
a distal end and including a fixation element and an electrode
array, wherein the fixation element is between the electrode
array and the distal end of the lead; and
an elongate member configured to be inserted in the
lumen of the introducer, the elongate member having a
conductive element adjacent a non-conductive distal end
portion that extends from a distal end of the elongate member a
distance equal to a distance from the distal end of the lead to a
predetermined location of the electrode array.
App. Br. 11, Claims Appendix.
Rejections
Claims 1--4 and 7 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Bonde (US 2008/0269716 Al, pub. Oct. 30, 2008).
Claims 5 and 6 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Bonde and Gerber (US 2008/0132979 Al, pub. June 5, 2008).
Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Bonde and Tronnes (US 2010/0228328 Al, pub. Sept. 9, 2010).
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Appeal2018-005961
Application 14/331,283
ANALYSIS
In rejecting independent claim 1, the Examiner finds Bonde discloses
all the recited elements of the claim except "Bonde fails to specifically
disclose the non-conductive distal end portion of the elongate member
extending a distance equal to a distance from the distal end of the lead to a
predetermine[d] location of the electrode array." Final Act. 5. According to
the Examiner,
it would have been obvious to one of ordinary skill in the art at
the time of the invention was made to try extending the non-
conductive distal portion a distance, of Bonde, equal to a
distance from a distal end of a lead to a predetermined location
of one or more electrodes of an electrode array, to provide
nothing more than predictable results of coordinating the non-
conductive distal end portion of a lead and an elongate member,
such that when the elongate member determines a treatment
location by providing a test stimulation with a conductive
element of the elongate member, the one or more electrodes of
the electrode array of the lead will be implanted at the same
location to stimulate the same tissue, thereof.
Id. at 6. The Examiner maintains that Bonde's disclosure "at paragraph
[0038] which specifically discloses placing the conductive element on
needle 18 such that it is 'displaced some distance from the tip 22"' renders
the missing feature obvious. Ans. 3.
Appellants argue that the Examiner's rejection relies on impermissible
hindsight because
one of skill in the art would not have reached a conclusion that
an elongate member as recited in the present claims should have
a conductive element adjacent a non-conductive distal end
portion that extends from a distal end of the elongate member a
distance equal to a distance from the distal end of the lead to a
predetermined location of the electrode array.
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Appeal2018-005961
Application 14/331,283
App. Br. 7. According to Appellants, "nothing in Bonde would lead one to
extend the non-conductive distal portion a distance equal to a distance from
a distal end of a lead to a predetermined location of one or more electrodes
of the array as suggested by the Examiner." Id. at 8. In particular,
Appellants argue
[ n ]othing in Bonde teaches or suggests that 'near the
distal tip' of the electrode could or should mean a distance from
the distal tip equal to a distance from a distal end of a lead to a
predetermined location of one or more electrodes of the lead, as
recited in the present application.
Id. at 9.
We are persuaded by Appellants' arguments.
"Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int'!, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
"The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984) ). "It is impermissible to use the claimed invention as an instruction
manual or 'template' to piece together the teachings of the prior art so that
the claimed invention is rendered obvious." Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
We agree with Appellants that the Examiner has not adequately
explained why it would have been obvious to modify Bonde to "try
extending the non-conductive distal portion [ of needle 18] a distance" equal
to a distance from the distal end of the lead to a predetermined location of
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Appeal2018-005961
Application 14/331,283
the electrode array, as required by claim 1. Although the Examiner found
that Bonde teaches placing the conductive element some distance from the
tip or distal end of needle 18, this teaching by itself is not sufficient reason
to modify Bonde. The Examiner does not provide an adequate reason as to
why it would have been obvious to modify Bonde to extend the non-
conductive distal portion of needle 18 a distance equal to a distance from the
distal end of the lead to a predetermined location of the electrode array. In
other words, the Examiner has not shown how Bonde' s disclosure of
electrode 20 being some distance from the distal end of needle 18 suggests a
relationship between the lead and the needle. Rather, the Examiner's
rationale for the modification, i.e., to coordinate the non-conductive distal
end portion of a lead and an elongate member, such that when the elongate
member determines a treatment location by providing a test stimulation with
a conductive element of the elongate member, the one or more electrodes of
the electrode array of the lead will be implanted at the same location to
stimulate the same tissue, appears to be a restatement of Appellants' stated
advantage. Aside from referring to the same reasoning Appellants'
Specification provides for aligning the lead and elongate member, the
Examiner has not provided rational underpinnings for modifying Bonde.
Based on the record presented, the Examiner's rationale for modifying
Bonde to provide a non-conductive distal end portion coordinated with the
lead appears to be based on impermissible hindsight
Accordingly, we do not sustain the rejection of independent claim 1 as
obvious over Bonde, including dependent claims 2--4 and 7. The
Examiner's additional findings and determinations with respect to dependent
claims 5, 6, and 8, including the Examiner's reliance on Gerber and Tronnes,
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Application 14/331,283
does not remedy the above-discussed deficiency in the rejection of
independent claim 1. As such, we do not sustain the rejections of claims 5,
6, and 8 for the same reasons as claim 1.
DECISION
The Examiner's decision to reject claims 1-8 is reversed.
REVERSED
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