Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201914700831 (P.T.A.B. Feb. 12, 2019) Copy Citation 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. Appeal2018-003872 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. 2 Appeal2018-003872 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 3 Appeal2018-003872 Application 14/700,831 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," 4 Appeal2018-003872 Application 14/700,831 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 5 Appeal2018-003872 Application 14/700,831 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 6 Appeal2018-003872 Application 14/700,831 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. 7 Appeal2018-003872 Application 14/700,831 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. 8 Appeal2018-003872 Application 14/700,831 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 PolyGetter™ 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 9 Appeal2018-003872 Application 14/700,831 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 10 Appeal2018-003872 Application 14/700,831 ... 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 11 Copy with citationCopy as parenthetical citation