Ex Parte Pavlik et al

Patent Trial and Appeal BoardJul 30, 2013

10717721 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DANIEL R. PAVLIK and JORDON D. HONECK ____________ Appeal 2011-007969 Application 10/717,721 Technology Center 3700 ____________ Before: JOHN C. KERINS, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-5, 8-13, 25, and 29 as unpatentable under 35 U.S.C. § 103(a) over Westlund (US 6,643,550 B2, iss. Nov. 4, 2003) and the rejection of claims 1-6, 8, 9, 12, 13 and 25 as unpatentable under 35 U.S.C. § 103(a) over Ley (US 6,912,423 B2, iss. Jun. 28, 2005) and Bush (US 5,385,578, iss. Jan. 31, 1995). We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-007969 Application 10/717,721 - 2 - THE INVENTION Appellants’ invention relates to a welded junction for a medical electrical lead. Spec. 1, para. [0001]. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A medical electrical lead, comprising: a component including a surface and a groove formed in the surface; a conductor, the conductor extending within the lead and including a plurality of wire strands cabled together positioned within the groove of the component; and a resistance weld formed between the conductor and the component; wherein the groove includes a depth and the conductor positioned within the groove includes a pre-weld diameter, the pre-weld diameter being greater than the depth of the groove. OPINION Unpatentability over Westlund Claims 1-5, 8-13 and 25 The Examiner finds that Westlund discloses all of the elements of claim 1 except that it lacks a pre-weld diameter of the conductor that is greater than the depth of the groove. Ans. 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use a conductor with a pre-weld diameter greater than the depth of the groove as such determination amounts to mere optimization of a variable that requires only routine skill. Id. Alternatively, the Examiner recognizes that the pre-weld diameter may be smaller, larger or the same size as the depth of the groove and concludes that the invention is obvious because the pre-weld diameter is merely one of a finite number of identified Appeal 2011-007969 Application 10/717,721 - 3 - solutions when determining the appropriate ratio between the diameter of the conductor and depth of the groove. Id. Appellants dispute the Examiner’s conclusion that the geometric size and shape of the conductor and of the groove and the geometric relationship between the conductor and the groove is a matter of mere routine skill or involves only a finite number of identified solutions. App. Br. 6-7. Contrary to the Examiner’s rationale, there are more alternatives available than merely whether the diameter of a cable is greater than, less than, or equal to, the depth of the groove. 1 See Ans. 11-13. Those alternatives include cross-sectional geometric profiles of a cable that are not circular and, therefore, do not have one, single “diameter” per se. Other alternatives include various possibilities of sheathing and packaging of the wire strands of the cable, both as to the individual wires and to the exterior surface of the cable as a whole, that may influence whether the cable is amenable to a resistance weld between the conductor and the component. Thus, we are not persuaded that the Examiner has shown, by a preponderance of the evidence, that the invention is obvious to try on the asserted basis that it involves little more than a person of ordinary skill in the art choosing among a finite number of identified, predictable solutions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Accordingly, we do not sustain the Examiner’s unpatentability rejection of claim 1, or of claims 2-5, 8-13 and 25 that depend therefrom. 1 For example, Figures 10C and 10D of Westlund depict a multi-filar coil wrapped helically around a chamfer. See Westlund, Fig. 10C & 10D. Appeal 2011-007969 Application 10/717,721 - 4 - Claim 29 The rejection of independent claim 29 suffers from the same infirmity as the rejection of claim 1 and we do not sustain the rejection of claim 29 for the same reason. Unpatentability over Ley and Bush The Examiner finds that Ley discloses all of the elements of claim 1 except that it fails to disclose a resistance weld formed between the conductor and component. Ans. 7. The Examiner relies on Bush as disclosing use of a resistance weld. Id. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to use a resistance weld between the conductor and component of Ley to achieve the claimed invention. Id. According to the Examiner, a person of ordinary skill in the art would do this to minimize the bulk of the connection. Id. Appellants traverse the rejection by arguing that a person of ordinary skill would not combine Ley and Bush because Ley’s conductor is covered with insulation opposite the intended weld site, making a resistance weld impractical or at least a bad idea. App. Br. 9. The Examiner responds by stating that Ley discloses that the insulation is removed at the place where the conductor 106 is inserted into the groove 102. Ans. 14, citing Ley, Col. 5, ll. 46-48. After reviewing column 5 and the accompanying Figures 9 and 10 of Ley, we find that the preponderance of the evidence supports the Appellants’ position. Figure 10 indicates that filar 106 has an outer diameter 108 that is wider than the width 104 of groove 102. We understand the width 108 of Appeal 2011-007969 Application 10/717,721 - 5 - filar 106 to include insulation. See Ley, Col. 5, ll. 40-46.2 Although Ley discloses that forcing filar 106 into groove 102 removes insulation to allow electrical conductivity between the filar and the groove, Figure 10 suggests that the removal of insulation is only partial, leaving copious amounts of insulation material in the vicinity of the weld area. Thus, we agree with the Appellants that the presence of insulation in the weld area contra-indicates the use of resistance welding. Accordingly, a preponderance of the evidence supports Appellants’ position that a person of ordinary skill in the art would likely be disinclined to modify Ley with Bush to achieve the patented invention. Accordingly, we do not sustain the Examiner’s unpatentability rejection of claims 1-6, 8, 9, 12, 13 and 25 over Ley and Bush. DECISION The decision of the Examiner to reject claims 1-5, 8-13, 25, and 29 as unpatentable over Westlund is REVERSED. The decision of the Examiner to reject claims 1-6, 8, 9, 12, 13 and 25 as unpatentable over Ley and Bush is REVERSED. REVERSED Klh 2 “FIGS. 9 and 10 illustrate another option for a terminal 100. The terminal 100 includes a plurality of grooves 102 formed therein. The grooves 102 are configured to receive an insulated filar 106 therein. The grooves have a width 104 which is slightly smaller than an outer diameter 108 of the filar 106.” Ley, Col. 5, ll. 40-46.