Ex Parte O et al

Patent Trial and Appeal Board

Oct 26, 2017

11157375 (P.T.A.B. Oct. 26, 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.
11/157,375 06/21/2005 David O'Brien 03362.0019U1 7295
36802 7590
PACESETTER, INC.
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
EXAMINER
TOTH, KAREN E
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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 DAVID O’BRIEN, JASON WHITE, MICHAEL FONSECA,
FLORENT CROS, JASON KROH, DAVID STERN, and MARK ALLEN
Appeal 2017-000387
Application 11/157,3751
Technology Center 3700
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
DEBORAH KATZ, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is St. Jude Medical Luxembourg Holdings II
S.A.R.L. Br. 2.
Appeal 2017-000387
Application 11/157,375
STATEMENT OF CASE
According to the Specification,
This invention relates to implanted sensors for wirelessly
sensing pressure, temperature and other physical properties
within the human body. More particularly, the invention
concerns a wireless, un-powered, micromachined pressure
sensor that can be delivered using catheter-based endovascular
or surgical techniques to a location within an organ or vessel.
Spec. 11.
The following claim is representative.
34. A sensor comprising:
a fused unitary housing formed of an electrically insulating
material, the fused unitary housing comprising a plurality of walls that
define a hermetic chamber,
wherein an upper one of said plurality of walls has a peripheral
section and a central section that is thinner than said peripheral section
such that said central section comprises a deflectable wall portion that
deforms under pressure, the plurality of walls, including the respective
peripheral and central section of the upper one of said plurality of
walls, being comprised of the same material;
a capacitor having first and second capacitor plates, said first
capacitor plate being located within said hermetic chamber and fixed
with relation to said hermetic chamber, and said second capacitor
plate being located within said hermetic chamber and fixed with
respect to said deflectable wall portion, wherein the relative distance
between said first and second capacitor plates changes as said
deflectable wall portion deforms; and
an inductor connected to said capacitor to form an inductive-
capacitive (LC) circuit; wherein an electrical characteristic of said LC
circuit varies in response to deformation of said deflectable wall
portion;
wherein the electrically insulating material is selected from the
group comprising fused silica, glass, sapphire, quartz, and diamond.
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Cited References
Bell US 4,207,604 June 10, 1980
Mikkor US 4,625,561 Dec. 2, 1986
Suzuki et al. US 5,355,714 Oct. 18, 1994
Bauer et al. US 2001/0042679 Al
(“Suzuki“)
Nov. 22, 2001
Wang et al. US 2002/0035852 Al
(“Bauer“)
Mar. 28, 2002
Rich et al. US 2002/0151816 Al
(“Wang“)
Oct. 17, 2002
Lloyd et al. US 2004/0073137 Al
(“Rich“)
Apr. 15,2004
Petersen et al. US 6,939,299 B1
(“Lloyd“)
Sept. 6, 2005
Leuthardt et al. US 2006/0129056 Al
(“Peterson“)
June 15, 2006
Shabtay et al. US 2009/0122180 Al
(“Leuthardt“)
May 14, 2009
Contadini et al. US 2010/0001104 Al
(“Shabtay“)
Jan. 7, 2010
Hoppe et al. US 2011/0091730 Al
(“Contadini“)
Apr. 21,2011
Soh et al. US 2012/0122731 Al
(“Hoppe“)
May 17, 2012
Wright et al. US 2013/0083506 Al
(“Soh“)
Apr. 4, 2013
Maloney et al. US 2014/0026619 Al
(“Wright“)
Jan. 30, 2014
Karam et al. US 2015/0314585 Al
(“Maloney“)
Nov. 5,2015
JP2005-61747
(“Karam“)
Mar. 10, 2005
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Application 11/157,375
Grounds of Rejection
1. Claims 7, 9, 11—14, 19, 23, 24, and 34—36 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Petersen in
view of Bell and Mikkor.
2. Claims 4—6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Petersen in view of Bell and Mikkor, in view
Lloyd.
3. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Petersen in view of Bell, Mikkor, and Suzuki.
4. Claim 10 is rejected under pre-AJA 35 U.S.C. § 103(a) as being
unpatentable over Petersen in view of Bell, Mikkor, and Leuthardt.
5. Claims 20-23 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Petersen in view of Bell, Mikkor, and
Rich.
6. Claim 25 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Petersen.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
2—14. The following facts are highlighted.
1. The Specification discloses that, “the present invention is a sensor
having a capacitive element and a three dimensional inductor coil
connected to said capacitive element to form an LC circuit. The LC
circuit is hermetically encapsulated within an electrically
insulating housing.” Spec. 112.
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2. The Specification discloses that the sensor includes assembled
wafers and capacitor plates laser-cut around their peripheries. The
capacitor is reduced to its final size and the two wafers are
hermetically fused together. A C02 laser can be used at a peak
wavelength of about 10 microns if the substrate is fused silica.
195.
3. According to the Specification,
In an alternate method, the wafers are pre-bonded using glass frit
to produce a hermetic seal around the cavities. In this
method, the laser cut only releases the sensors from the wafer, and
does not provide the primary means of creating the hermetic seal.
Other suitable methods of hermetically sealing the wafers include,
but are not limited to, adhesives, gold compression bonding, direct
laser bonding, and anodic bonding. 196.
4. Petersen discloses an implantable pressure sensor that is
hermetically sealed. Abstract, col. 7,11. 45-51, claim 9.
5. Bell discloses a pressure sensor that is hermetically sealed to form
a chamber. Claims 1, 4.
6. Bell discloses that
[i]n practice discs 2 and 4 and spacer member 18 may
be made from any nonconductive material but the material
selected for each part should be the same material or a
substantially similar material. In this embodiment the
nonconductive or insulating material is preferably one which
has approximately a zero hysteresis, such as mina, fused silica,
or glass such as Pyrex. Furthermore, the conductive layers may
be plated on, etched on, sputtered on, screened on and fired, or
applied in any other manner well known in the art.
Col. 4,11. 21-30; emphasis added.
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7. The Declaration under 37 C.F.R. §1.132 of Jin-Woo Park discusses
several references not cited in the rejection. The Park declaration
only provides comments with respect to the Petersen reference (|6)
cited and does not comment on either the Bell or Mikkor
references.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
Claims should be given their broadest reasonable interpretation during
examination. “[D]tiring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that Appellants have “the opportunity to amend the
claims to obtain more precise claim coverage.” In re American Academy Of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “Absent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325
(Fed Cir. 2004). “Without evidence in the patent specification of an express
intent to impart a novel meaning to a claim term, the term takes on its
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ordinary meaning.” Optical Disc Corp. v. Del Mar Avionics, 208 F.3d 1324,
1334 (Fed. Cir. 2000).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Obviousness Rejection 1
Appellants do not argue rejections 2—6 (dependent claims) separately
in the Brief. Br. 11; Ans. 13. Therefore, rejection 1 is the dispositive issue
in the present case.
The Examiner finds that
Petersen teaches a sensor comprising a fused, unitary housing
(see entire document, especially fig. IB of Petersen) formed of
an electrically insulating material selected from the group of
silica, glass, sapphire, quartz, and diamond (see entire
document, document, especially figs. 1A, 1 B; col. 4, lines 16-
22; col. 6, lines 40-42 of Petersen). The housing comprises a
plurality of walls that define a hermetic chamber (see entire
document, especially figs. 1A, 1 B; col. 4, lines 26-32; col. 7,
lines 42-55 of Petersen), wherein an upper one of the plurality
of walls has a peripheral section and a central section that is
thinner than the peripheral section, such that the central section
comprises a deflectable wall portion that deforms under
externally applied pressure (see entire document, especially
figs, la, lb; col. 6, lines 42-48 of Petersen). A capacitor has first
and second capacitor plates 104, 106, the first plate 104 being
located within the chamber and fixed with relation to the
chamber and the second 106 being located within the chamber
and fixed with respect to the deflectable wall portion, wherein
the relative distance between the first and second capacitor
plates changes as the deflectable wall portion deforms (see
entire document, especially fig. lb; col. 6, lines 30-57; col. 7,
lines 38-47 of Petersen). An inductor 110 is connected to the
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capacitor to form an inductive-capacitive (LC) circuit, wherein
an electrical characteristic of the LC circuit varies in response
to deformation of the deflectable wall portion (see entire
document, especially figs, la, lb; col. 6, lines 31-38; col. 7,
lines 39- 47 of Petersen).
Ans. 2—3.
“Petersen does not disclose the upper and lower sections of the fused,
unitary housing being the same electrically insulating material.” Ans. 3.
The Examiner relies on Bell as teaching, “a sensor with a fused unitary
housing formed entirely of fused glass (column 4, lines 21-38 - the top and
bottom plates of glass are fused using more glass) and a capacitive sensor
with first and second plates located inside a hermitically sealed chamber
inside the housing (elements 6 and 8).” Id.
The Examiner concludes that
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to have made the sensor of
Petersen with the entire fused housing being made of a single
electrically insulating material, as taught by Bell, because Bell
teaches that having the parts being the same is preferential (“ ...
the material selected for each part should be the same
material../4 column 4 lines 22-23). Further, Mikkor (US
4625561) provides additional motivation in that Mikkor teaches
that it is preferable for a fused sensor made of insulating
material to be made of a single type of material in order to
minimize thermal stress in the device (column 4, lines 65-68).
Ans. 3^4.
Appellants contend that “Peterson does not disclose the upper and
lower sections of the fused, unitary housing being the same electrically
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insulating material, as required by claims 34 and 36.” Br. 8. More
particularly, Appellants contend that
a skilled artisan would appreciate that anodically bonding a
glass substrate to a silicon substrate necessarily leaves a bonded
interface between the glass and silicon substrates. Stated
differently, anodic bonding is not capable of fusing glass and
silicon substrates nor is it capable of producing the fused
unitary housing (much less the fused unitary housing formed of
an electrically insulating material), as required by independent
claims 34 and 36 and their dependent claims.
Br. 8. Appellants argue that neither Bell nor Mikkor remedy the deficiencies
of Petersen. Br. 9, 11.
The dispositive issues is whether Peterson disclosed a fused, unitary
housing, as claimed.
ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s argument set forth in the Final Rejection and Answer.
Our mandate is to give claims their broadest reasonable interpretation.
Cuozzo Speed Technolgies, LLC v. Lee, 136S. Ct. 2131,2144 (2016). See
also, In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We also decline to read limitations from the specification into the
claims, a practice that the Court of Appeals for the Federal Circuit, our
reviewing court, cautions against. See SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by explanations contained in
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the written description, it is important not to import into the claim limitations
that are not part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the
claim language is broader than the embodiment.”).
Appellants contend that “Peterson does not disclose the upper and
lower sections of the fused, unitary housing being the same electrically
insulating material, as required by claims 34 and 36.” Br. 8. Appellants
contend that Bell
does not teach a sensor with a fused unitary housing formed entirely
of fused glass and thus does not cure the defects of Petersen. Bell
teaches that disks 2 and 4 and spacer member 18 should be the same
or a substantially similar material, where such material can be fused
silica or glass such as Pyrex, and that disks 2 and 4 can be bonded to
spacer member 18 by applying glass frit and firing the entire assembly
to/use the glass frit and seal the assembly. (Emphasis added; Bell,
column, 4, lines 21-45).
App. Br. 9. We are not persuaded.
The Examiner provides multiple pieces of evidence showing that the
relevant art treats the terms “fused” and “bonded” interchangeably when
applied to the joining of insulating materials such as glass and/or silicon, in
direct contrast to Appellant's declaration.” Ans. 9. For example, U.S. patent
application 2002/0035852 discloses forming a hermetic edge seal, wherein
microwave energy is directed toward the edge seal material in order to heat
it, causing a “second glass frit edge seal material to fuse to, or bond with, the
first or pre-fired glass frit base material on both substrates thereby creating a
hermetic edge seal." (U.S. patent application publication, 117.)
The term “fused” is not specifically defined in the Specification and
therefore it takes on its ordinary meaning. The term fused means to “[j]oin
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or blend to form a single entity.”2 The claims do not recite a specific
manner of bonding or fusing the housing portions. We further note that the
term “unitary” in the claim is also consistent with its ordinary meaning and
the definition of “fused,” which fusion or bonding forms a single, unitary
entity. Thus, we interpret the term “unitary” in the claims as requiring a
single joined piece.
Both Petersen (Figs. 1A, IB; col. 4, lines 26—32; col. 7, lines 42—55)
and Bell (claim 1) disclose a hermetically sealed pressure sensor. Bell
teaches “a sensor with a fused unitary housing formed entirely of fused glass
(column 4, lines 21-38 - the top and bottom plates of glass are fused using
more glass) and a capacitive sensor with first and second plates located
inside a hermitically sealed chamber inside the housing (elements 6 and 8).”
Ans. 3. “Bell teaches that having the parts being the same is preferential (‘...
the material selected for each part should be the same material...' column 4
lines 22-23).” Id., emphasis added.
Appellants argue that glass frit used in Bell to bond the portions of the
housing
is an intermediate material different from glass or fused silica. Fused
glass frit has different thermal and mechanical properties than glass or
fused silica and contains glass particles, metal oxides, ceramic oxides
other than fused silica, and organic binders. Using glass frit to bond or
adhere two glass or fused silica substrates necessarily leaves a bonded
interface for at least the fact that the temperature to melt and fuse the
glass frit particles is an order of magnitude too low to cause the glass
or fused silica substrates to melt. (Minoru et al. in Evidence Appendix
D and Audet et al. in Evidence Appendix E). Figure 1 is an SEM
2 https://en.oxforddictionaries.com/defmition/fuse
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micrograph of a cross-section of a glass frit bonding layer (b) between
two glass substrates (a) and (c). (Cruz et al. in Evidence Appendix F).
App. Br. 9. Appellants reproduce Fig. 10 of Cruz in the Appeal Brief, p. 10,
allegedly showing the difference between glass and glass frit. Appellants
argue that the “fused silica, glass, and quartz of the housing of Bell have
melting points ranging from about 1000°C to about 1800°C. Glass frit is a
paste that conventionally consists of glass powder, organic binder, inorganic
fillers and solvents and has a melting point of less than about 500°C. ” App.
Br. 9.
We are not persuaded by Appellants’ arguments concerning glass frit
being different from glass. The pending claims do not exclude bonding
materials made at specific melting points, or specific bonding or fusing
methods. Glass and glass frit both include the same material, glass or silica.
Claim 34, includes the transitional phrase “comprising,” and is open to
additional claim elements. “‘Comprising’ is a term of art used in claim
language which means that the named elements are essential, but other
elements may be added and still form a construct within the scope of the
claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997). Therefore, additional components in the glass frit are not excluded
from the scope of claim 34. In addition, Appellants’ Specification discloses
glass frit as an acceptable bonding/fusion method for their sensor. FF3.
Appellants have not limited the scope of their claim to laser bonding only, or
excluded glass frit from the scope of the pending claims.
In addition, notwithstanding Bell’s disclosure of glass frit as a
bonding agent, Bell also discloses that “having the parts being the same is
preferential (‘... the material selected for each part should be the same
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material...’ column 4 lines 22-23).” Id., emphasis added. FF6. Thus, it
would have been obvious to one of ordinary skill in the art at the time of the
invention to use the same material for the sensor housing.
Appellants put forth the Declaration of Jin-Woo Park in support of
patentability of the pending claims. The Declaration of Park discusses
several references not cited in the rejection. The Park Declaration only
provides comments with respect to the Petersen reference (|6) cited and
does not comment on either the Bell or Mikkor cited references, and thus is
not persuasive. Appellants argue that Bell and Mikkor fail to overcome the
deficiencies of Petersen. As discussed herein, we agree with the Examiner
that Bell remedies any deficiencies in Petersen with respect to the fused
housing made of the same material. Glass and glass frit are both made of
glass material. No other claim limitations are argued by Appellants. In this
decision we consider only those arguments actually made by Appellant.
Arguments that Appellant could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See 37
C.F.R. §41.37(c)(l)(iv).
The obviousness rejection is affirmed for the reasons of record.
Rejections 2—6 are not argued by Appellants and are thus, summarily
affirmed.
CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections,
which are affirmed for the reasons of record. All pending, rejected claims
fall.
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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