Ex Parte Kast et al

Patent Trial and Appeal Board

Apr 29, 2016

12725603 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121725,603 03/17/2010
13582 7590 05/03/2016
Medtronic Inc. (Neuro)
710 Medtronic Parkway NE
MS: LC340 Legal Patents
Minneapolis, MN 55432
FIRST NAMED INVENTOR
JohnE. Kast
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.
P0034508.0l 9553
EXAMINER
PATTON, AMANDA K
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
medtronic _neuro _ docketing@cardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. KAST, STEVE T. DEININGER, and
RAYMOND F. MCMULLEN
Appeal2014-002672
Application 12/725,603
Technology Center 3700
Before: WILLIAM A. CAPP, GEORGE R. HOSKINS, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
John E. Kast et al. ("Appellants") appeal under 35 U.S.C. § 134 from
the Examiner's Final rejection of claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).
The claims are directed to an accessory apparatus for improved
recharging of an implantable medical device. Spec. 1 (Title). Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Appeal2014-002672
Application 12/725,603
1. A system comprising:
a rechargeable implantable medical device,
wherein the medical device has an exterior face, the face
having a geometric center,
wherein the device includes a recharge coil, wherein the
center of the recharge coil is offset from the geometric center of
the face; and
an apparatus configured to be disposed about at least a
portion of the device such that the device and apparatus together
define a combined face with a geometric center aligned with the
center of the recharge coil.
Appeal Br. 19.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chardack
Rezai
Deininger
Singhal
us 3,598, 128
US 7 ,454,251 B2
US 2009/0018600 Al
US 7 ,596,408 B2
REJECTIONS
Aug. 10, 1971
Nov. 18, 2008
Jan. 15,2009
Sept. 29, 2009
(I) Claims 1, 2, 4, 5, 9, 10, 12, 13, and 17-20, are rejected under 35
U.S.C. § 103(a) as unpatentable over Rezai and Deininger. 1
(II) Claims 3 and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rezai, Deininger, and Chardack.
1 The Final Action (dated November 8, 2012) includes a heading listing
only claims 1, 2, 4, 5, 9, 10, 12, 13, and 17 as rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rezai and Deininger. Final Act. 5. However,
the discussion below this heading makes clear that claims 18-20 are rejected
as unpatentable over Rezai and Deininger as well. See Final Act. 7.
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Application 12/725,603
(Ill) Claims 6-8 and 14--16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rezai, Deininger, and Singhal.
OPINION
Rejection (I)
Claims 1, 2, 4, and 5
The Examiner finds that Rezai discloses "an implantable medical
device with a geometric center (e.g. typical IPO housing 1115); and an
apparatus configured to be disposed around at least a portion of the IMD
such that the device and apparatus together define a combined face (e.g.
device 1110 as shown in Figures 1 lA-1 lB)." Final Act. 5. The Examiner
further finds that "Rezai discloses a commercially available IMD, but does
not expressly disclose an IMD with a recharge coil that is offset from the
geometric center of the face," and the Examiner relies on Deininger to teach
this feature. Final Act. 5. Specifically, the Examiner finds Deininger
teaches "that it was known in the art of HvID for a device to have a recharge
coil (e.g. recharge coil 150 and coil housing 120 as shown in Figures 12A,
12B, and 13) wherein when the device is assembled the geometric center of
the exterior face of the IMD is not the center of the recharge coil." Final
Act. 5 (discussing Deininger, Fig. 15, where the center of coil 150, inside
form 10, is offset from the center of the assembly including header 200,
interconnects 220, and form 1 O); see also Ans. 6. As reasoning for
modifying Rezai, the Examiner states:
It would have been obvious to one having ordinary skill
in the art at the time the invention was made to include the IMD
of Deininger in the retention device of Rezai such that when
combined the geometric center of the device was aligned with
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Application 12/725,603
the center of the recharge coil since Rezai teaches such an
arrangement with a typical IMD (e.g. as shown in Figure 1 lB).
Final Act. 5.
Appellants contend that it is mere speculation for the Examiner to find
that the proposed combination of Rezai and Deininger would result in the
center of the coil aligned with the center of the combined face of the device
and apparatus as recited in claim 1. Appeal Br. 9. In this regard, Appellants
contend that it is impossible to determine pertinent details of the geometry of
the Examiner's proposed combined face, such as its size and which portion
of Rezai would be included in the combined face. Appeal Br. 10. Thus,
According to Appellants, the Examiner's proposed combination would not
necessarily result in the alignment of the centers of the coil and combined
face, as required by claim 1. Further, according to Appellants, the Examiner
does not set forth any rationale for arranging the Examiner's proposed
combination of Rezai and Deininger in such a way that the centers of the
coil and combined face would be aligned. Appeal Br. 12.
Appellants' arguments are persuasive as to the rejection of claim 1.
The Examiner does not set forth an adequate reason for arranging recharge
coil 150 of Deininger such that its center is aligned with a center of a face of
the combination of Rezai and Deininger. As noted by the Examiner (Final
Act. 5), Deininger teaches a recharge coil with a center that is not aligned
with a center of the assembly in which the recharge coil is placed. See
Deininger, Fig. 15 (depicting the center of form 10, which corresponds to the
center of coil 150, offset from the center of the complete assembly). We
understand the Examiner's rejection to rely on the combined assembly
depicted in Figure 15 of Deininger as the "device" recited in claim 1
inasmuch as claim 1 requires the device to include a face with a geometric
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Application 12/725,603
center and with a recharge coil having a center offset from the geometric
center of the device. See Final Act. 5. The Examiner's reasoning that the
alignment of centers required in claim 1 would be the result of the
Examiner's proposed combination because "Rezai teaches such an
arrangement with a typical IMD (e.g. as shown in Figure 1 lB)" (Final
Act. 5) does not account for the fact that the center of coil 150 is offset from
the "device" (the assembly of which it is a part, shown in Deininger,
Figure 15). In other words, the Examiner does not provide an adequate
reason as to why a person of ordinary skill would have compensated for the
misalignment of the center of coil 150 and the device depicted in Figure 15
of Deininger by the amount (and in the direction) necessary to achieve
alignment of the center of coil 150 and the assembly resulting from
incorporation of the coil.
The Examiner finds that the alignment of centers required in claim 1
is not perfect alignment or exact alignment. See Ans. 7. Therefore,
according to the Examiner, the alignment of centers required by claim 1
would occur in the Examiner's proposed combination. However, even
accounting for a margin of error in the alignment of centers as discussed by
the Examiner, no rational underpinnings support the Examiner's conclusion
that the proposed combination would result in the required (albeit somewhat
imperfect) alignment as opposed to some other configuration. Accordingly,
we do not sustain the Examiner's rejection of claim 1 as unpatentable over
Rezai and Deininger. Further, we do not sustain the Examiner's rejection of
claims 2, 4, and 5, which depend from claim 1, as unpatentable over Rezai
and Deininger.
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Claims 9, 10, 12, and 13
Independent claim 9 recites, in part,
An apparatus configured to be placed about an
implantable medical device having a face with a geometric
center offset from a center of a recharge coil of the device, the
apparatus comprising:
an asymmetric region formed between a portion of the
first and second major surfaces and the continuous side surface,
wherein the asymmetric region is adjacent to the cavity and
wherein the geometric center of the combined apparatus and
device, as compared to the geometric center of the face of the
implantable medical device, is shifted towards the center of the
recharge coil of the device when the device is received in the
cavity.
Appeal Br. 20 (emphasis added).
We do not sustain the Examiner's rejection of claims 9, 10, 12, and 13
under 35 U.S.C. § 103(a) as unpatentable over Rezai and Deininger. For the
reasons expressed below, independent claim 9 is indefinite. Therefore, the
prior art rejection of claim 9 and claims 10, 12, and 13 depending therefrom
must fall because it is necessarily based on speculative assumptions as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA
1962). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejection.
NEW GROUND OF REJECTION
"Because the claims perform the fundamental function of delineating
the scope of the invention, []the purpose of the definiteness requirement is to
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ensure that the claims delineate the scope of the invention using language
that adequately notifies the public of the patentee's right to exclude."
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Circ.
2005) (abrogated on other grounds by Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S.Ct. 2120 (2014)).
In contrast to claim 1, claim 9 does not require an implantable medical
device; claim 9 is directed to the apparatus to be placed about a medical
device. Claim 9 recites the physical arrangement of the apparatus in terms
of undefined, unclaimed structure. Specifically, claim 9 requires a
comparison of two distances, (i) a distance from the center of the recharge
coil to the geometric center of the face of the implantable medical device and
(ii) a distance from the center of the recharge coil to the center of the
combination of the apparatus and device. Appellants' Specification does not
impose any meaningful limitation on the relationship between the centers of
the recharge coil and the implantable medical device. Without knowing the
specific placement of the center of the implantable medical device with
respect to the center of the recharge coil of the device, one of skill in the art
would not be able to make the comparison required by claim 9 and would
not be able to determine whether a given apparatus would be covered by
claim 9. See Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter.
2008) (precedential) (holding that a claim reciting a paper feeding unit
located at a height enabling a user who is approximately 170 cm tall to
execute a paper feeding process was indefinite for failing to specify the
positional relationship of the user and printer to each other). Thus, we enter
a new ground of rejection of claim 9, as well as of claims 10-16 depending
therefrom, under 35 U.S.C. § 112, second paragraph, as indefinite.
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Claims 17-20
Appellants assert that claim 17 recites "limitations that are similar to
those discussed in regards to claim 1," and Appellants rely on the same
arguments for claim 17 as those discussed above regarding claim 1. Appeal
Br. 13.
We are not persuaded by Appellants' arguments. Claim 1 7 does not
recite a center of the recharge coil that is offset from the geometric center of
the face a device that includes the recharge coil. Accordingly, the basis for
reversing the rejection of claim 1 as unpatentable over Rezai and Deininger
does not apply to the rejection of claim 17. Further, given the differences in
scope between claims 1 and 17, Appellants do not persuasively explain why
the method recited in claim 17 patentably distinguishes over the Examiner's
proposed combination of Rezai and Deininger. Thus, we sustain the
Examiner's rejection of claim 17 as unpatentable over Rezai and Deininger.
Claims 18-20, which depend from claim 17, fall with claim 17. See Appeal
Br. 13.
Rejection (II)
The Examiner does not rely on Chardack in any way that would
remedy the deficiency in the rejection of independent claim 1 as
unpatentable over Rezai and Deininger. Accordingly, we reverse the
Examiner's rejection of dependent claim 3 as unpatentable over Rezai,
Deininger, and Chardack.
As discussed above, claim 11 is indefinite. Accordingly, we do not
sustain the Examiner's rejection of claim 11 as unpatentable over Rezai,
Deininger, and Chardack.
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Rejection (111)
The Examiner does not rely on Singhal in any way that would remedy
the deficiency in the rejection of independent claim 1 as unpatentable over
Rezai and Deininger. Accordingly, we reverse the Examiner's rejection of
dependent claims 6-8 as unpatentable over Rezai, Deininger, and Singhal.
As discussed above, claims 14--16 are indefinite. Accordingly, we do
not sustain the Examiner's rejection of claims 14--16 as unpatentable over
Rezai, Deininger, and Singhal.
DECISION
(I) The Examiner's rejection of claims 1, 2, 4, 5, 9, 10, 12, 13, and
17-20, as unpatentable over Rezai and Deininger, is reversed as to claims 1,
2, 4, 5, 9, 10, 12, and 13, and affirmed as to claims 17-20.
(II) The Examiner's rejection of claims 3 and 11 as unpatentable
over Rezai, Deininger, and Chardack is reversed.
(III) The Examiner's rejection of claims 6-8 and 14--16 as
unpatentable over Rezai, Deininger, and Singhal is reversed.
We enter a NEW GROUND of rejection of claims 9-16 under 35
U.S.C. § 112, second paragraph, as indefinite.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
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Application 12/725,603
In addition to affirming the Examiner's rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the prosecution will be remanded to the
Examiner ....
(2) Request rehearing. Request that the proceeding
be reheard under§ 41.52 by the Board upon the same
record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(l), in order to preserve the right to seek
review under 35 U.S.C. §§ 141or145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
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