Ex Parte O et alDownload PDFPatent Trial and Appeal BoardOct 26, 201711157375 (P.T.A.B. Oct. 26, 2017) Copy Citation 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. 2 Appeal 2017-000387 Application 11/157,375 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 3 Appeal 2017-000387 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. 4 Appeal 2017-000387 Application 11/157,375 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. 5 Appeal 2017-000387 Application 11/157,375 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 6 Appeal 2017-000387 Application 11/157,375 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 7 Appeal 2017-000387 Application 11/157,375 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 8 Appeal 2017-000387 Application 11/157,375 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 9 Appeal 2017-000387 Application 11/157,375 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 10 Appeal 2017-000387 Application 11/157,375 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 11 Appeal 2017-000387 Application 11/157,375 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 12 Appeal 2017-000387 Application 11/157,375 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. 13 Appeal 2017-000387 Application 11/157,375 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 14 Copy with citationCopy as parenthetical citation