Ex Parte Nielsen et al

Patent Trials and Appeals Board

Jun 26, 2019

14694095 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/694,095 04/23/2015
64619 7590 06/28/2019
MEDTRONIC, INC. (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
FIRST NAMED INVENTOR
Christian S. Nielsen
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.
134.07830101 9294
EXAMINER
LEVICKY, WILLIAM J
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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 CHRISTIANS. NIELSEN, KUNAL J. PARALIKAR,
BRAD C. TISCHENDORF, JOHN D. NORTON,
MARKUS W. REITERER, ANDREW J. THOM, and
GORDON 0. MUNNS
Appeal2018-008689
Application 14/694,095
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant, Medtronic, Inc., appeals under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 4, 6-15, 19, and 20, which
constitute all the claims pending in this application. Claims 2-3, 5, and 16-
18 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2018-008689
Application 14/694,095
CLAIMED SUBJECT MATTER
The claims are directed to an implantable device with optical lead
connector. Claim 1, reproduced below, with emphasis added, is illustrative
of the claimed subject matter:
1. An implantable active medical device compnsmg a
hermetic cavity defined by a hermetic enclosure, the medical
device comprising:
a housing defining a housing cavity and forming a first
portion of the hermetic enclosure defining the hermetic cavity;
a lead connector receptacle configured to mate with a lead
and defining a length extending into the housing cavity, the lead
connector receptacle comprising contact rings separated by
insulating rings in axial alignment defining a hermetic tube
forming a second portion of the hermetic enclosure even when a
lead is not mated to the lead connector receptacle;
an optical feedthrough disposed in the housing cavity and
hermetically bonded to the lead connector receptacle to form a
closed end portion of the hermetic tube and forming a third
portion of the hermetic enclosure, the optical feedthrough
configured to transmit light through the hermetic enclosure; and
a solid state light source disposed within the hermetic
cavity and optically coupled to the optical feedthrough of the lead
connector receptacle.
REFERENCES
The references relied upon by the Examiner in rejecting the claims on
appeal are:
Miesel
Dadd et al. ("Dadd")
Stahmann et al. ("Stahmann")
Erickson
Kane et al. ("Kane")
Janzig et al. ("Janzig")
Wolf, II ("Wolf')
US 6,198,952 Bl
US 8,396,570 B2
US 2002/0082651 Al
US 2005/0070987 Al
US 2008/0077190 Al
US 2008/0177167 Al
US 2014/0330341 Al
2
Mar. 6, 2001
Mar. 12, 2013
June 27, 2002
Mar. 31, 2005
Mar. 27, 2008
July 24, 2008
Nov. 6, 2014
Appeal2018-008689
Application 14/694,095
REJECTIONS
Claims 1, 4, 6-15, 19, and 20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Wolf and Janzig with or without Stahmann. Final
Act. 3.
Claims 1, 4, 6, 9-12, and 15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Erickson, Miesel, and Janzig. Final Act. 11.
Claims 7, 8, 19, and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Erickson, Miesel, Janzig, and Kane. Final Act. 18.
Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Erickson, Miesel, Janzig, and Dadd.
OPINION
Independent claims 1 and 10 contain the same argued limitation
emphasized above. The Examiner attempts to show subject matter satisfying
the hermetic aspects of this limitation several different ways. First the
Examiner asserts that such subject matter is an inherent aspect of Wolf's
epoxy headers 552 because, according to the Examiner, if headers 552 were
not hermetic it would defeat the purpose of making barrier 562 hermetic.
Ans. 2-3. However, as Appellant correctly points out, the standard for
inherency requires the allegedly inherent feature to be necessarily present in
the prior-art device or method relied upon. App. Br. 8 ( citing MPEP §
2112). Because Appellant also points out a plausible alternate arrangement
where hermetic barrier 562 can function without hermetic headers 552
(Reply. Br. 4), the Examiner's evidence and reasoning on the record before
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Appeal2018-008689
Application 14/694,095
us is not sufficient to carry the burden of establishing inherent hermetic
headers 552 in Wolf.
Stahmann and Miesel are the other references relied upon by the
Examiner to account for this same aspect of the claimed subject matter
pertaining to the hermetic arrangement. Final Act. 5, 13. However, both of
these references are generic in nature with regard to their teachings of
hermetic sealing. The cited portion of Stahmann (para. 39) simply states
circuitry 300 may be contained within a hermetically sealed housing 304.
The cited portion of Miesel simply indicates the IMD 11 includes a
hermetically-sealed enclosure. Teachings that indicate a hermetically sealed
housing or enclosure is generally provided are not specific enough to
demonstrate lead receptacles comprising contact rings and insulating rings
that define a hermetic enclosure, particularly one hermetically sealed
without the assistance of a lead, as required by the independent claims, were
known in, or obvious in view of, the prior art.
For the foregoing reasons, and because the remaining references as
applied by the Examiner do not remedy these deficiencies, we do not sustain
the Examiner's rejections on any grounds set forth by the Examiner on the
record before us.
DECISION
The Examiner's rejections are reversed.
REVERSED
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