Ex Parte Kampa et al

Patent Trial and Appeal BoardMar 17, 2017

12912563 (P.T.A.B. Mar. 17, 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. 12/912,563 10/26/2010 Greg Kampa A10P1044 2312 36802 7590 PACESETTER, INC. 15900 VALLEY VIEW COURT SYLMAR, CA 91392-9221 EXAMINER FLORY, CHRISTOPHER A ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 03/21/2017 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): Patent.CRMDSylmar@sjm.com lcancino-zepeda@sjm.com epineiro @ sj m. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREG KAMPA and PHONG D. DOAN Appeal 2015-001834 Application 12/912,563 Technology Center 3700 Before JOSEPH A. FISCHETTI, PHILLIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35U.S.C. § 134 from the Examiner’ rejections of claims 1—20.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants identify “Pacesetter, Inc.” as the real party in interest. (Appeal Br. 3.) Appeal 2015-001834 Application 12/912,536 STATEMENT OF THE CASE The Appellants’ invention relates “to leads that are compatible with magnetic resonance imaging (‘MRI’) systems.” (Spec. 12.) Illustrative Claim2 1. An implantable lead assembly comprising: an outer jacket elongated along a center axis, the outer jacket having a body formed by a single layer that radially extends between opposite interior and exterior surfaces, the interior surface defining an elongated lumen; first and second coiled conductors held within the body of the outer jacket between the interior and exterior surfaces of the outer jacket, the first and second coiled conductors wrapped around the lumen and the center axis; and first and second electrodes coupled with the outer jacket, the first electrode electrically coupled to the first coiled conductor and the second electrode electrically coupled to the second coiled conductor in order to at least one of deliver stimulus pulses or sense electrical activity. Gotthardt Cobian Barker References US 5,016,646 US 5,796,044 US 7,798,864 B2 May 21, 1991 Aug. 18, 1998 Sept. 21,2010 Rejections The Examiner rejects claims 1—7, 10-14, and 17—20 under 35 U.S.C. § 103(a) as being unpatentable over Gotthardt and Barker. (Final Action 2.) The Examiner rejects claims 8, 9, 15, and 16 under 35 U.S.C. § 103(a) as being unpatentable over Gotthardt, Barker, and Cobian. (Final Action 4.) 2 This illustrative claim is quoted from the Claims Appendix (“Claims App.”) set forth on pages 11—14 of the Appeal Brief. 2 Appeal 2015-001834 Application 12/912,536 ANALYSIS Claims 1 and 13 are the independent claims on appeal, with the rest of the claims on appeal (i.e., claims 2—12 and 14—20) depending therefrom. (See Appeal Br., Claims App.) Independent claims 1 and 13 each recites an implantable lead assembly comprising an “outer jacket having a body formed by a single layer.” (Id.) The Examiner finds that Gotthardt discloses an implantable lead assembly as recited in independent claims 1 and 13, except that Gotthardt fails to teach that its jacket has a single-layer body. (See Final Action 2—3.) The Examiner also finds that a single-layer body is an improvement in that it “minimiz[es] the manufacturing process by eliminating the additional lead insulation layers.” (Id. at 3.) The Examiner further finds: Barker teaches that it is known to form a stimulation lead using an outer jacket that is extends from the exterior to a central lumen that is formed from a single layer as set forth in Fig. 4A. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the system of Gotthardt with using a single layer insulation/jacket since Barker teaches that such a technique was previously known and would yield the predictable results. (Id.) In other words, the Examiner finds 1) Gotthardt discloses a base device upon which the claimed invention can be seen as an improvement; 2) Barker teaches a comparable device possessing this improvement; and 3) a person of ordinary skill in the art could have applied the improvement technique to Gotthardt’s device and the results would have been predictable. The Appellants argue that “the applied references do not collectively teach or suggest the claimed subject matter,” and that the Examiner “has not otherwise clearly articulated any reasons why the claimed subject matter 3 Appeal 2015-001834 Application 12/912,536 would have been obvious.” (Appeal Br. 7.) The Appellants contend that Gotthardt discloses “a traditional multi-layer co-axial lead design” where conductors are provided in a “coiled” and “multi-layer” fashion; while Barker discloses “a traditional unibody cable lead design where each conductor is contained with individual lumens within a solid lead body.” (Id. at 8, 9.) We are not persuaded by the Appellants’ position because “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Appellants do not dispute the Examiner’s finding that a single layer jacket body “minimizes the manufacturing process by eliminating the additional lead insulation layers” (Final Action 3). The Appellants acknowledge that Barker teaches a unibody lead design (see Appeal Br. 8) and hence teaches this improvement. And the Appellants do not point, with particularity, to flaws in the Examiner’s implication that a person of ordinary skill in the art would have recognized that a single-layer jacket body would have improved Gotthardt’s manufacturing process by eliminating the additional jacket-body layers. Additionally, the Appellants do not assert that modifying Gotthardt’s implantable lead to have a single-layer jacket body would be beyond the ken of a person of ordinary skill in the art. The Appellants direct our attention to the multilayer (i.e., radially spaced) and embedded fashion of Gotthardt’s coiled conductors. (See Appeal Br. 8.) However, the Appellants do not 4 Appeal 2015-001834 Application 12/912,536 contend that a person of ordinary skill in the art would have been unable to employ the creative steps necessary to incorporate radially spaced and embedded coiled conductors into a single-layer jacket body.3 Accordingly, we determine that the Examiner has adequately articulated a reason why the claimed invention would have been obvious and the Appellants do not persuasively establish that the Examiner’s reasoning is incorrect, unsupported, or otherwise erroneous. Thus, we sustain the Examiner’s rejection of independent claims 1 and 13 under 35 U.S.C. § 103(a) as being unpatentable over Gotthardt and Barker. The Appellants do not advance separate or further arguments for the dependent claims (see Appeal Br. 9), and so they fall with independent claims 1 and 13. Thus, we sustain the Examiner’s rejection of dependent claims 2—7, 10-12, 14, and 17—20 under 35 U.S.C. § 103(a) as being unpatentable over Gotthardt and Barker; and we sustain the Examiner’s rejection of dependent claims 8, 9, 15, and 16 as unpatentable over Gotthardt, Barker, and Cobian. DECISION We AFFIRM the Examiner’s rejections of claims 1—20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 3 We note that the Examiner “need not seek out precise teachings directed to the specific subject matter of the challenged claim” as “the inferences and creative steps that a person of ordinary skill in the art would employ” can be taken into account. KSR, 550 U.S. at 419. 5