Ex Parte Zhao et al

Patent Trial and Appeal Board

Mar 18, 2016

12262083 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/262,083 10/30/2008
36802 7590 03/22/2016
PACESETTER, INC.
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
YongD. Zhao
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.
A08Pl043 5522
EXAMINER
FAIRCHILD, MALLIKA DIPAYAN
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YONG D. ZHAO, XIAOYI MIN, and VIROTE INDRA VUDH
Appeal2014-002422
Application 12/262,083
Technology Center 3700
Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yong D. Zhao (Appellants1) appeal under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1-3, 5-12, 14, 15, and 17-27.2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Pacesetter, Inc., dba
St. Jude Medical, Cardiac Rhythm Management Division. Br. 3.
2 Claims 4, 13, and 16 are objected to. Final Act. 9.
Appeal2014-002422
Application 12/262,083
THE CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An implantable medical lead comprising:
a body including a distal portion with an electrode
and a proximal portion with a lead connector end; and
an electrical pathway extending between the
electrode and lead connector end and including a single
coiled inductor including first and second electrically
conductive filar cores and a lead conductor electrically
coupled between the lead connector3 and the single coiled
inductor,
wherein the first and second filar cores are
electrically coupled together at a proximal terminal on a
proximal end of the coiled inductor, the first and second
cores are electrically coupled together at a distal terminal
on a distal end of the coiled inductor, and wherein the first
and second filar cores are helically wound together into a
coiled portion to form at least a portion of the single coiled
inductor between the proximal and distal terminals, the
filar cores being electrically isolated from each other in the
coiled portion,
wherein the proximal terminal is located distal of
the connector4 and is electrically coupled to a distal end of
the lead conductor, the lead conductor being electrically
coupled to the lead connector end and the distal terminal,
located proximal of the electrode is electrically coupled to
a portion of the electrical pathway extending to the
electrode.5
3 We understand this claim term as "the lead connector [end]."
4 There is no antecedent basis for the claim term "the connector," and the
claim term "the connector" also does not appear in the Specification or the
claims as filed with the application.
5 The Examiner determines that this claim limitation is "unclear," however,
does not enter a rejection against claim 1. Adv. Act. 3 (mailed June 13,
2013). We understand this claim limitation includes a typographical error
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Appeal2014-002422
Application 12/262,083
THE REJECTION6
Claims 1-3, 5-12, 14, 15, and 17-27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bottomley (US 2008/0262584 Al; pub. Oct.
23, 2008).
OPINION
The Examiner found, inter alia, that Bottomley discloses the
limitations of independent claims 1 and 12, including implantable medical
lead 20 comprising an electrical pathway extending between electrode 4 and
a lead connector end (which is inserted into an implantable pulse generator
(IPG)), and a single coiled inductor, in that the Examiner considers
Bottomley' s "current suppression module" (CSM) 8 an inductor, with at
least first and second electrically conductive filar cores (i.e., first inner layer
coil 16, intermediate second layer coiled back section 17, and third outer
layer coiled forward section 18). Final Act. 5 (citing Bottomley, Figs. 11,
14L, 14M, 21A); see also Adv. Act. 2-3 7; Ans. 6. The Examiner further
found that "[t]he first and second filar cores are electrically coupled at the
electrode and the terminal connector end which goes into the IPG." Final
Act. 6; see also Ans. 7.
with respect to the placement of a comma, and therefore, we understand this
claim limitation reads as follows: " ... the lead conductor being electrically
coupled to the lead connector end[,] and the distal terminal[] located
proximal of the electrode is electrically coupled to a portion of the electrical
pathway extending to the electrode." See Appeal Br. 10 (Claims App.).
6 The Examiner's rejection of claims 1-27 under 35 U.S.C. § 112, second
paragraph, has been overcome. See Adv. Act. 2.
7 Advisory Action mailed June 13, 2013.
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Appeal2014-002422
Application 12/262,083
The Examiner determined that Bottomley does not disclose that the
first and second filar cores of a single coiled inductor are electrically
coupled together at a proximal terminal distal of the connector and at a distal
terminal proximal of the electrode, as required by the claims. Final Act. 5-
6; Adv. Ans. 2-3. The Examiner reasoned that it would have been obvious
to modify Bottomley's single coiled inductor to include the terminals, as
claimed,
in order to provide the predictable results of reducing the
bulkiness of the lead by reducing redundant material, such as the
plurality of filars, along the electrical pathway between the
electrode and the distal terminal and the connector and the
proximal terminal and/ or providing an easier to manufacture lead
by not requiring all the filars to be inserted along the entire lead,
but only up to the connectors.
Final Act. 6-7; see also Adv. Act. 4; Ans. 8.
Appellants argue, inter alia, that Bottomley's conductors, which form
a CSM, "are clearly independent from one another and are separately
coupled to the electrode and IPG." Br. 7 (citing Bottomley, Figs. 14 L, 21 A,
23, 30A---C) (emphasis added). Thus, Appellants contend that Bottomley's
CSM does "not electrically cooperate and would not be integrated into a
single lead conductor pathway." Id. at 8 (emphasis added).
We are persuaded by Appellants' argument. The Examiner fails to
provide support in Bottomley for the Examiner's finding that "[t]he first and
second filar cores are electrically coupled at the electrode and the terminal
connector end which goes into the IPG." Final Act. 6; see also Ans. 7; see
also, e.g., Bottomley, Fig. 14M. In the embodiments from Bottomley relied
on by the Examiner, the conductors remain electrically separate from each
other along their entire length from the electrode to the IPG (see supra), and
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Appeal2014-002422
Application 12/262,083
there is no indication that such separation is eliminated at the electrode or
IPG as suggested by the Examiner. The Examiner's reasoning as to why
providing terminals to electrically couple the conducts of a CSM distally or
proximally to the electrode and IPG would have been obvious to one skilled
in the art relies on the unsupported finding that the conductors of the CMSs
are electrically coupled together at the electrode and/or IPG. Therefore, we
cannot sustain the Examiner's rejection of independent claims 1 and 12. We
also do not sustain the Examiner's rejection of claims 2, 3, 5-11, 14, 15, and
17-27 depending from independent claims 1 and 12.
DECISION
The Examiner's decision to reject claims 1-3, 5-12, 14, 15, and 17-
27 under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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