Ex Parte Jackson et al

Patent Trial and Appeal BoardMay 11, 2017

12946266 (P.T.A.B. May. 11, 2017)

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. 12/946,266 11/15/2010 Timothy R. Jackson 432469 388334 9564 7590 05/15/2017 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY (32469) 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER FAIRCHILD, MALLIKA DIPAYAN ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 05/15/2017 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): PatentDocketing @ F aegreB D .com e-OfficeActionBSC@FaegreBD.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY R. JACKSON and JOSEPH SCHROEDER Appeal 2015-007775 Application 12/946,266 Technology Center 3700 Before THOMAS F. SMEGAL, JEFFREY A. STEPHENS, and PAUL J. KORNICZKY, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Timothy R. Jackson and Joseph Schroeder (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s rejection2 of claims 1—9, 12—15, 21, and 24 under 35 U.S.C. § 103(a) as obvious over Scheiner (US 2007/0067008 Al, pub. Mar. 22, 2007) and Stolz (US 2003/0199953 Al, pub. Oct. 23, 2003); and of claim 16 as obvious over Scheiner, Stolz, and 1 According to Appellants, the real party in interest is Cardiac Pacemakers, Inc. Br. 3. 2 Appeal is taken from the adverse decision of the Examiner as set forth in the Final Office Action, dated November 6, 2014 (“Final Act.”). Appeal 2015-007775 Application 12/946,266 Kuzma (US 6,757,970 Bl, iss. July 6, 2004).3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1 and 24 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. An implantable medical lead, comprising: a lead body including a proximal section and a distal section, the distal section having a pre-biased shape configured to engage a wall of a blood vessel to secure the lead within the blood vessel; and at least one electrode coupled to the distal section of the lead body, each electrode of the at least one electrode comprising an active portion and an inactive portion, the active portion having a first thickness perpendicular to the longitudinal axis of electrode at a cross section of the electrode, each of the active portion and the inactive portion exposed on an exterior of the implantable medical lead, the inactive portion having a second thickness perpendicular to the longitudinal axis of electrode at the cross section, the active portion having an exterior contact surface and the inactive portion having an exterior surface, the active portion and the inactive portion oriented along the pre-biased shape such that the exterior contact surface of the active portion is outward facing and configured to engage the wall of the blood vessel and the exterior surface of the inactive portion is inward facing to not engage the wall of the blood vessel; 3 Independent claim 23 has been allowed and claims 10, 11, and 22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Act. 11. Claims 17—20 have been canceled. See Amendment filed November 13, 2012. 2 Appeal 2015-007775 Application 12/946,266 wherein each electrode of the at least one electrode has an asymmetrical conductor mass having a greater mass at the active portion as compared to the inactive portion due to the first thickness being greater than the second thickness, the asymmetrical conductor mass imparting an asymmetrically distributed current density having greater current density at the active portion than at the inactive portion. ANALYSIS Obviousness of Claims 1—9, 12—15, 21, and 24 over Scheiner and Stolz We are persuaded by Appellants’ arguments that the Examiner erred in rejecting claims 1—9, 12—15, 21, and 24 over Scheiner and Stolz. See Appeal Br. 11—19; Reply Br. 3—12. In rejecting claim 1, the Examiner relies on Scheiner for disclosing substantially all of the elements of the implantable medical lead, including having a lead body with, inter alia, “a plurality of annular-shaped electrodes coupled to the distal section of the lead body, each electrode comprising an active portion and an inactive portion (the electrode is a masked electrode and therefore the portion that is masked is considered as the inactive portion).” Final Act. 4—5. While recognizing that “Scheiner does not specifically teach that at least one electrode has an asymmetrical conductor mass having a greater mass at the active portion as compared to the inactive portion due to the first thickness being greater than the second thickness,” the Examiner determines that “Stolz teaches a ring electrode with a coplanar contact element (e.g. 506, fig. 14, 500 Fig. 15) that is provided such that the thickness of the electrode [is] asymmetrical due to the element imparting a greater mass to one side of the electrode.” Id. at 5. 3 Appeal 2015-007775 Application 12/946,266 From the foregoing, the Examiner concludes that it would be obvious “to modify the teachings of Scheiner with the teachings of Stolz and have the coplanar coupling element along the active portion of the electrodes in order to provide the predictable results of reducing the conductor bending moments/intemal stress at the conductor/electrode interface.” Id. at 5—6; Ans. 6. In contesting the Examiner’s rejection of claim 1 as obvious over Scheiner and Stolz, Appellants first point out that [e]ven if the coplanar coupling of Stolz ‘provide the predictable results of reducing the conductor bending moments/intemal stress at the conductor/electrode interface’ as proposed in the Office Action (Page 6), the rejection still does not explain why one having ordinary skill in the art would place Stolz’s coplanar coupling at an outwardly facing active electrode portion of the biased lead as opposed to any other electrode portion. Br. 16. Appellants correctly conclude that the rejection does not properly account for “the active portion and the inactive portion oriented along the pre-biased shape such that the exterior contact surface of the [thicker] active portion [having greater mass] is outward facing and configured to engage the wall of the blood vessel and the exterior surface of the inactive portion is inward facing to not engage the wall of the blood vessel” as recited in claim 1. Id. at 17 (emphasis added). We find that the Examiner misreads Figures 14 and 15 of Stolz. What appears to be an asymmetric—shaped portion of Stolz’s coplanar coupling 112, illustrated in Figures 13—15 and described in paragraphs 47—54, is not configured to engage the wall of the blood vessel, because second coupling region 502 (not shown in either Figures 14 or 15) of coplanar coupling 112 4 Appeal 2015-007775 Application 12/946,266 is described as the portion that is in contact with Stolz’s electrodes (contacts 36). “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)). Thus, we find that the Examiner fails to articulate a reason or motivation supported by rational underpinning for utilizing the portion of Stolz’s internal coplanar coupling illustrated in Figures 14 and 15 as an asymmetrically—shaped outwardly facing active electrode configured to engage the wall of the blood vessel, as recited by claim 1. Absent some articulated rationale for doing so, the Examiner’s conclusory assertion is inadequate to support a conclusion of obviousness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand.”). Obviousness of claim 16 over Scheiner, Stolz, and Kuzma The rejection of dependent claim 16 over Scheiner, Stolz, and Kuzma is based on the same unsupported findings discussed above and must be reversed for similar reasons. 5 Appeal 2015-007775 Application 12/946,266 DECISION We REVERSE the Examiner’s rejections. REVERSED 6