Ex Parte Zhao et alDownload PDFPatent Trial and Appeal BoardMar 18, 201612262083 (P.T.A.B. Mar. 18, 2016) Copy Citation 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 2 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. 3 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 4 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 5 Copy with citationCopy as parenthetical citation