Ex Parte Smith et al

Patent Trial and Appeal Board

Feb 12, 2019

14700831 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/700,831 04/30/2015
45458 7590 02/14/2019
SCHWEGMAN LUNDBERG & WOESSNER/BSC
POBOX2938
MINNEAPOLIS, MN 55402
Michael C. Smith
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.
279.L71US1 7218
EXAMINER
EV ANISKO, GEORGE ROBERT
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/14/2019 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL C. SMITH, GREGORY J. SHERWOOD,
DUSTIN J. OL YNYK, JOHN M. EDGELL, DANIEL BOWEN,
SCOTT HEINEMAN, JOSEPH THOMAS DELANEY JR., and
KYLE A. KALSTABAKKEN
Appeal2018-003872
Application 14/700,831 1
Technology Center 3700
Before STEFAN STAICOVICI, BRETT C. MARTIN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision in
the Final Office Action (dated Mar. 16, 2017, hereinafter "Final Act.") rejecting
claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 Cardiac Pacemakers, Inc. is the applicant and identified as the real party in
interest in Appellants' Appeal Brief ( filed Aug. 31, 2017, hereinafter "Appeal
Br."). Appeal Br. 2.
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Application 14/700,831
We AFFIRM.
SUMMARY OF DECISION
INVENTION
Appellants' invention is related to an implantable medical device. Spec. 1, 1.
24.
Claims 1, 11, and 1 7 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. An apparatus comprising:
an implantable medical device including a housing;
electronic components located within the housing; and
a non-metallic hydrogen getter located within the housing, the
non-metallic hydrogen getter configured to absorb hydrogen and form
a bond with the hydrogen.
REJECTION
I. The Examiner rejects claims 1-20 under 35 U.S.C. § 103 as being
unpatentable over Langer (US 4,254,775, iss. Mar. 10, 1981) and Kim et al.,
(US 2011/0175078 Al, pub. July 21, 2011, hereinafter "Kim"). 2
II. The Examiner rejects claims 1-20 under 35 U.S.C. § 103 as being
unpatentable over Langer and Polygetters, Vacuum Energy Inc. (2009) or
Kullberg et al., Advanced Getter Materials for GaAs, RF/MW, MEMs and
Other Microelectronic Packages, International Microelectronics Assembly
and Packaging Society, Advanced Technology Workshop on RF and
2 The Examiner withdraws the rejection of claims 1-20 under 35 U.S.C. § 103 as
being unpatentable over Langer and Yasufumi (JP 2004-026559 A, pub. Jan. 29,
2004). See Examiner Answer (dated Dec. 29, 2017, hereinafter "Ans.") at 2; see
also Final Act. 2-5.
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Application 14/700,831
Microwave Packaging, San Diego, California USA, September 22-24, 2009
(hereinafter "Kullberg").
ANALYSIS
Rejection I
Claims 1-4, 6, 7, 9-14, and 16-19
Appellants do not present arguments for the patentability of claims 2--4, 6,
7, 9-14, and 16-19 apart from claim 1. See Appeal Br. 8-10. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims, with
claims 2--4, 6, 7, 9-14, and 16-19 standing or falling with claim 1.
The Examiner finds that Langer discloses, inter alia, hermetically sealed
housing 12 having a hydrogen getter 33 therein "'that acts ... to absorb any of the
hydrogen which could be released from capacitors 24."' Final Act. 3 ( citing
Langer, col. 2, 11. 60-65, col. 4, 11. 45--49). The Examiner further finds that
"Langer does not disclose specifically what the hydrogen getter is, [namely] ... a
non-metallic hydrogen absorbing polymer, such as polyacetylene, which does not
release water." Id. Nonetheless, the Examiner finds that Kim discloses "us[ing] a
non-metallic hydrogen absorbing polymer, such as polyacetylene, which does not
release water, to provide a conventional hydrogen getter to absorb the hydrogen,
prevent accumulation of combustible gases, and prevent corrosion." Id.; see also
Kim, para. 56. The Examiner concludes that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have modified the system
and method as taught by Langer, with a non- metallic hydrogen
absorbing polymer that bonds with hydrogen, such as polyacetylene,
which does not release water, as taught by Kim ... since it would
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provide the predictable results of providing a conventional hydrogen
getter to absorb the hydrogen, prevent accumulation of combustible
gases, and prevent corrosion.
Final Act. 3--4
Appellants argue that the combined teachings of Langer and Kim fail to
disclose "a non-metallic hydrogen getter configured to absorb hydrogen and form a
bond with the hydrogen." Appeal Br. 8. According to Appellants, Langer's
hydrogen getter material "is not described as being non-metallic," whereas Kim's
polymer material is conductive and "does not react with and bond to the hydrogen"
because if it would "it will cease to be conductive," and, thus, "the Kim polymer is
not a hydrogen getter, but a chemically unreactive hydrogen barrier." Id. at 8-9.
Appellants assert that "[a] hydrogen getter is not conductive" and that "mere
[hydrogen] absorption does not result in the bond provided by a 'hydrogen getter"'
because "[a] hydrogen getter ... provides a mechanism to permanently chemically
bond the hydrogen to the getter." Id.; see also Reply Brief (filed Feb. 27, 2018,
hereinafter "Reply Br.") at 2-3.
We are not persuaded by Appellants' arguments because obviousness does
not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA
1981). In this case, the Examiner is not replacing Langer's hydrogen getter 33
with Kim's penetration barrier 100, but rather with Kim's polymeric (non-metallic)
hydrogen absorption layer 140. As Kim's hydrogen absorption layer 140 is made
from polyacetylene, and Appellants' Specification describes polyacetylene as a
suitable material for a hydrogen getter, the Examiner is on solid footing in
determining that Kim's polymer 140 constitutes a "non-metallic hydrogen getter,"
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as called for by claim 1. Ans. 3 ( citing Kim, Abstract, para. 56, Fig. 3); see also
Spec. 6, 1. 19.
Further, in light of Appellants' description of polyacetylene as a suitable
material for a hydrogen getter and because Kim discloses polyacetylene as a
conductive polymer, we do not agree with Appellants that "[a] hydrogen getter is
not conductive." Appeal Br. 8. Moreover, the Examiner is correct in that
"[A]ppellants themselves note that conductive metals are used as getters." Ans. 3
( citing Spec. 1, 1. 20 ("palladium metal hydrogen getter")).
We also do not agree with Appellants that Kim's hydrogen absorption
polyacetylene layer 140 "does not result in the bond provided by a 'hydrogen
getter,"' where "it provides a mechanism to permanently chemically bond the
hydrogen to the getter." Appeal Br. 9. First, we note that such features are not
positively recited in claim 1 and limitations not appearing in the claims cannot be
relied upon forpatentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Secondly, as noted above, because Appellants' Specification describes
polyacetylene as a hydrogen getter material having "as many unsaturated bonds as
possible ... [and] acting as a ... hydrogen sink" (see Spec. 6, 11. 17-19), the
Examiner is correct in that Kim's hydrogen absorption polyacetylene layer 140 "is
[likewise] used to absorb and bond (i.e.[,] bind, restrain, hold together) with the
hydrogen." Ans. 3 (citing Kim para. 56, Fig. 3).
Appellants further argue that the Examiner employs impermissible hindsight
to combine the teachings of Langer and Kim because "Langer does not describe
any need for a different hydrogen getter than the coating 33" and "[ n Jo one of skill
in the art would look to the conductive polymer[] of ... Kim to provide any
advantage over the getter described by Langer." Appeal Br. 9. Appellants further
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contend that the Examiner's reasoning to combine the teachings of Langer and
Kim is "not found in any of the cited references." Id.
We are not persuaded by Appellants' arguments because the Examiner's
rejection is based on Langer not disclosing the type of hydrogen getter, and, thus, a
person of ordinary skill in the art would look to Kim's hydrogen absorption
polyacetylene layer 140 to use as Langer's hydrogen getter 33. See Final Act. 3.
In other words, the Examiner is not using Kim's hydrogen absorption
polyacetylene layer 140 to provide an advantage over Langer's hydrogen getter 33,
but rather is using Kim's type of hydrogen getter, namely, hydrogen absorption
polyacetylene layer 140, as Langer's hydrogen getter 33. See Ans. 3.
Stated differently, the Examiner's rejection is merely a substitution of Kim's
hydrogen absorption polyacetylene layer 140 for Langer's hydrogen getter 33. See
Final Act. 8. "[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result." KSR Int 'l Co.
v. Teleflex, Inc., 550 U.S. 398,416 (2007). In this case, because Kim's hydrogen
absorption polyacetylene layer 140 constitutes a "non-metallic hydrogen getter," as
discussed supra, and Langer's coating 33 acts as a hydrogen getter that absorbs
hydrogen gas (see Langer, col. 4, 11. 47--48), the Examiner has a sound basis for
determining that Kim's hydrogen absorption polyacetylene layer 140 would have
been a suitable hydrogen getter to use as a substitute for Langer's hydrogen getter,
i.e., coating 33.
Furthermore, we note that the Examiner has provided a reason with rational
underpinning, to use Kim's hydrogen absorption polyacetylene layer 140 as
Langer's hydrogen getter 33, namely, "to absorb the hydrogen, prevent
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accumulation of combustible gases, and prevent corrosion." See Final Act. 4, Ans.
3--4; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The apparent reason to
combine the teachings of Langer and Kim need not appear in, or be suggested by,
one or more of the references on which the Examiner relies. See KSR, 550 U.S. at
418 (Rejecting the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness). Here, Appellants have
not persuasively argued that the Examiner's conclusion lacks rational
underpinning. Moreover, Appellants have not provided persuasive evidence
showing that the Examiner's use of Kim's hydrogen absorption polyacetylene
layer 140 as Langer's hydrogen getter 33 would have been either beyond the level
of ordinary skill in the art or unpredictable to a person of ordinary skill in the art.
In conclusion, for the foregoing reasons, we sustain the rejection of claim 1
under 35 U.S.C. § 103 as unpatentable over Langer and Kim. Appellants'
arguments with respect to claims 2--4, 6, 7, 9-14, and 16-19 fall with the
arguments with respect to claim 1, and we therefore sustain the rejection of those
claims for the same reasons as discussed above in connection with claim 1.
Claims 5, 8, 15, and 20
Appellants rely on the same arguments discussed supra. See Appeal Br. 12
("claims are not obvious ... for the reasons given above"). Accordingly, for the
reasons discussed above, we likewise sustain the rejection of claims 5, 8, 15, and
20 over the combined teachings of Langer and Kim.
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Rejection II
Claims 1-3, 6, 7, 9-12, 14, and 16-18
Obviousness Rejection Based Upon Langer and Polygetters
Appellants do not present arguments for the patentability of claims 2, 3, 6,
7, 9-12, 14, and 16-18 apart from claim 1. See Appeal Br. 10-11. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(l)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims, with
claims 2, 3, 6, 7, 9-12, 14, and 16-18 standing or falling with claim 1.
The Examiner finds that Langer discloses, inter alia, hermetically sealed
housing 12 having a hydrogen getter 33 therein "'that acts ... to absorb any of the
hydrogen which could be released from the capacitors 24."' Final Act. 4 ( citing
Langer, col. 2, 11. 60-65, col. 4, 11. 45--49). The Examiner further finds that
"Langer does not disclose specifically what the hydrogen getter is, such as a non-
metallic hydrogen absorbing polymer which does not release water." Id.
Nonetheless, the Examiner finds that Polygetters "discloses that it is known to use
in electronic packages a non-metallic hydrogen absorbing polymer which does not
release water, to provide a conventional hydrogen getter to absorb the hydrogen,
prevent accumulation of combustible gases, and prevent corrosion." Id. Thus, the
Examiner concludes that
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to have modified the system
and method as taught by Langer, with a non-metallic hydrogen
absorbing polymer that bonds with hydrogen, which does not release
water, as taught by [Polygetters]. .. since it would provide the
predictable results of providing a conventional hydrogen getter to
absorb the hydrogen, prevent accumulation of combustible gases, and
prevent corrosion.
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Id. at 5.
Appellants argue that the Examiner employs impermissible hindsight to
combine the teachings of Langer and Polygetters because "Langer mentions no
problems with the getter ... 33" and, moreover, "Langer does not describe any
need for a different hydrogen getter than the coating 33." Appeal Br. 10; see also
Reply Br. 3. Appellants further contend that the Examiner's reasoning to combine
the teachings of Langer and Polygetters is "not found in the Langer reference."
Appeal Br. 11.
We are not persuaded by Appellants' arguments because the Examiner's
rejection is based on Langer not disclosing the type of hydrogen getter, and, thus, a
person of ordinary skill in the art would look to Polygetter's non-metallic hydrogen
getter to use as Langer's hydrogen getter 33. See Ans. 5 (citing Polygetters, p. 3
("The original PolyGetterâ„¢ polymeric getter was developed to getter
hydrogen.")). In other words, the Examiner's rejection is merely a substitution of
Polygetter's non-metallic hydrogen getter for Langer's hydrogen getter 33. See
Final Act. 8. As Polygetter's getter constitutes a "non-metallic hydrogen getter,"
and Langer's coating 33 acts as a hydrogen getter that absorbs hydrogen gas (see
Langer, col. 4, 11. 47--48), the Examiner has a sound basis for determining that
Polygetter's polymeric getter would have been a suitable hydrogen getter to use as
a substitute for Langer's hydrogen getter 33.
Furthermore, we note that the Examiner has provided a reason with rational
underpinning to use Polygetter's polymeric getter as Langer's hydrogen getter 33,
namely, "to absorb the hydrogen, prevent accumulation of combustible gases, and
prevent corrosion." See Final Act. 5. The apparent reason to combine the
teachings of Langer and Polygetters need not appear in, or be suggested by, one or
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more of the references on which the Examiner relies. Appellants have not
persuasively argued that the Examiner's conclusion lacks rational underpinning.
Moreover, Appellants have not provided persuasive evidence showing, that the
Examiner's use of Polygetter's polymeric getter as Langer's hydrogen getter 33
would have been either beyond the level of ordinary skill in the art or
unpredictable to a person of ordinary skill in the art.
In conclusion, for the foregoing reasons, we also sustain the rejection of
claim 1 under 35 U.S.C. § 103 as unpatentable over Langer and Polygetters.
Claims 2, 3, 6, 7, 9-12, 14, and 16-18 fall with claim 1.
Obviousness Rejection Based Upon Langer and Kullberg
With respect to the rejection of claims 1-3, 6, 7, 9-12, 14, and 16-18 under
35 U.S.C. § 103 as being unpatentable over Langer and Kullberg, we agree with
the Examiner that Appellants do not present any substantive arguments. See Ans.
5; see also Appeal Br. 10-11.
Further, we note that for the first time in the Reply Brief, Appellants argue
that the Examiner employs impermissible hindsight to combine the teachings of
Langer and Kullberg because Kullberg "discusses generally 'microelectronic
packages' on page 1" and "[ t ]here is no discussion of providing the getter in an
implantable, hermetically sealed device such as Langer." Reply Br. 4. This
argument is untimely and not in response to an argument raised by the Examiner
for the first time in the Answer. It will not be considered as Appellants offer no
reason why the argument was not raised in the Appeal Brief. See 37 C.F.R.
§ 41.41 (b )(2) ("Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's answer
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... will not be considered by the Board for purposes of the present appeal, unless
good cause is shown."); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000).
Accordingly, for the foregoing reasons, we summarily sustain the rejection
of claims 1-3, 6, 7, 9-12, 14, and 16-18 over the combined teachings of Langer
and Kullberg.
Claims 4, 5, 8, 13, 15, 19, and 20
Appellants rely on the same arguments discussed supra. See Appeal Br. 12
("claims are not obvious ... for the reasons given above"). Accordingly, for the
reasons discussed above, we likewise sustain the rejection of claims 4, 5, 8, 13, 15,
19, and 20 over the combined teachings of Langer and Polygetters or Kullberg.
SUMMARY
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 103 as
unpatentable over Langer and Kim is affirmed.
The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 103 as
unpatentable over Langer and Polygetters or Kullberg is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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