Boston Scientific Neuromodulation CorporationDownload PDFPatent Trials and Appeals BoardMay 6, 20202019005726 (P.T.A.B. May. 6, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/179,840 06/10/2016 John Michael Barker BSNC-1-083.3 1076 50638 7590 05/06/2020 Boston Scientific Neuromodulation Corp. c/o Lowe Graham Jones 701 Fifth Avenue Suite 4800 Seattle, WA 98104 EXAMINER MALAMUD, DEBORAH LESLIE ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 05/06/2020 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): patentdocketing@lowegrahamjones.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOHN MICHAEL BARKER __________ Appeal 2019-005726 Application 15/179,840 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 7–10, and 20.2 See Final Act. 1. Claims 6, 18, and 19 have been canceled and claims 11–17 are objected to as 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Boston Scientific Neuromodulation Corporation, which “is a wholly-owned subsidiary of Boston Scientific Corporation.” Appeal Br. 2. 2 The rejection of claim 5 under 35 U.S.C. § 102(b) as being anticipated by Sundquist has been withdrawn. Ans. 6. Claims 21–23 were added via the amendment filed December 11, 2018, which is prior to the Final Office Action; however, the Examiner did not indicate whether these claims are rejected or objected to as being dependent upon a rejected base claim. See Final Act., passim; Ans., passim; Appeal Br. 6; Reply Br. 2. Appeal 2019-005726 Application 15/179,840 2 being dependent upon a rejected base claim and indicated as containing allowable subject matter. See Appeal Br. 14, 16 (Claims App.); Final Act. 1, 8. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The claims are directed to implantable electrical stimulation systems that include a lead. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An electrical stimulation system, comprising a control module comprising a housing, an electronic subassembly disposed in the housing, and a connector comprising a connector housing defining at least one port, and a plurality of connector contacts disposed in the connector housing; and a lead electrically coupleable to the control module, the lead comprising: a lead body with a distal end, a proximal end, and a longitudinal length; a plurality of electrodes disposed along the distal end of the lead body; a plurality of terminals disposed along the proximal end of the lead body; a central lumen defined by the lead body and extending from the proximal end of the lead body; a plurality of conductive wires extending along the longitudinal length of the lead body and electrically coupling the electrodes to the terminals; and a rod permanently disposed within the central lumen at the proximal end of the lead body to stiffen the Appeal 2019-005726 Application 15/179,840 3 proximal end of the lead body to facilitate insertion of the proximal end of the lead body into the connector of the control module, wherein the rod is hollow and defines a lumen extending along a length of the rod; wherein at least one of the at least one port of the connector housing is configured for receiving the proximal end of the lead body. REFERENCES The prior art relied upon by the Examiner are: Name Reference Date Sundquist US 6,567,704 B2 May 20, 2003 Calzada US 2006/0200216 A1 Sept. 7, 2006 REJECTIONS Claims 1–4, 7, 8, and 10 are rejected under 35 U.S.C. § 102(b) as being anticipated by Sundquist. Final Act. 5. Claims 9 and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Sundquist and Calzada. Final Act. 7. OPINION Independent claim 1 requires, among other things, “a rod permanently disposed within the central lumen at the proximal end of the lead body to stiffen the proximal end of the lead body to facilitate insertion of the proximal end of the lead body into the connector of the control module” (emphasis added). Independent claim 3 requires, among other things, “a cap physically and permanently attached to the rod and disposed outside of, and proximal to, the proximal end of the lead body” (emphasis added). Appeal 2019-005726 Application 15/179,840 4 In regard to claim 1, Appellant contends that the Examiner finds that “the guide wire 400 of Sundquist corresponds to the recited rod” (Final Act. 6) but “Sundquist explicitly discloses the removal of the guide wire.” Appeal Br. 6 (citing Sundquist 10:50–52, 65–67). As such, Appellant argues that “the guide wire of Sundquist is not permanently disposed within the central lumen at the proximal end of the lead body, as recited in claim 1.” Id. at 7. In regard to claim 3, Appellant contends that the Examiner finds that Sundquist’s “connector pin 54 corresponds to the recited cap” (Final Act. 6), but Sundquist’s “guide wire 400 is inserted through the connector pin 54 and later, removed from the connector pin.” Id. at 8–9. As such, Appellant argues that Sundquist’s “connector pin 54 of Sundquist is not physically and permanently attached to a rod, as recited in claim 3.” Id. at 9. In the Answer, the Examiner does not dispute that Sundquist’s guide wire 400 is inserted through and is later removed from the connector pin 400. Ans., passim. Instead, the Examiner responds by pointing out that the Specification does not provide a special definition for the term “permanent” and does not recite this term in connection to the rod. Ans. 7. The Examiner further points out that claims 1 and 3 are open-ended by reciting “comprising” and thus, “a rod or cap that is permanently disposed in a lumen could be included in a system that also includes removable components.” Id. at 7–8. The Examiner takes the position that “Appellant has not explained how the structure of Sundquist renders it incapable of use in the claimed manner” and “[t]o structurally differentiate over the art of record, the invention would need to claim some sort of structure or process, such as sealing, welding, etc. that would prevent the elements from being removed or reversibly attached.” Id. at 8. Appeal 2019-005726 Application 15/179,840 5 First, we note that prior art that must be modified to meet the disputed claim limitation does not anticipate the claim. See, e.g., In re Chudik, 851 F.3d 1365, 1374 (Fed. Cir. 2017) (“Prior art that ‘must be distorted from its obvious design’ does not anticipate a new invention.” (quoting In re Wells, 53 F.2d 537, 539 (CCPA 1931))). In this regard, the Examiner’s points concerning the “comprising” language and “a rod or cap that is permanently disposed in a lumen could be included in a system that also includes removable components” are not relevant to the anticipation inquiry. In other words, in making a rejection based on anticipation rather than obviousness, the Examiner must establish that Sundquist discloses “a rod permanently disposed within the central lumen at the proximal end of the lead body” as recited in claim 1 and “a cap physically and permanently attached to the rod” as recited in claim 3. We agree with the Examiner that the Specification does not recite the term “permanent” in connection to the rod. However, the Examiner did not reject the claims for not failing to comply with the written description requirement. Even if the Examiner were to make such a rejection, we note that Appellant has possession of at least the following subject matter because the Specification discloses: (1) rod 1016 being welded to end cap 1014 (Spec. 17:14–15); (2) lead 1102 and end cap 1106 are joined by injection molding (id. at 18:26–27); and (3) Figure 10D shows conductive wires being embedded within end cap 1004, which contains rod 1016. We also agree with the Examiner that the Specification does not provide a special definition for the term “permanent.” We thus look to its Appeal 2019-005726 Application 15/179,840 6 plain and ordinary meaning, which is “not easily removed.”3 This definition is consistent with the above-noted disclosures of the Specification. We thus construe claim 1’s limitation at issue as requiring “a rod that is not easily removed from the central lumen at the proximal end of the lead body” and claim 3’s limitation at issue as requiring “a cap that is not easily removed from the rod.” To the extent that the Examiner is asserting that the limitations “permanently disposed” and “physically and permanently attached” are functional limitations, we agree with Appellant that these are structural limitations rather than functional limitations. See Appeal Br. 10; Reply Br. 8; see, e.g., MPEP § 2113(I) (citing In re Garnero, 412 F.2d 276, 279 (CCPA 1979)). In this regard, the Examiner errs in asserting that “Appellant has not explained how the structure of Sundquist renders it incapable of use in the claimed manner” (Ans. 8). Further, as Sundquist discloses that its guide wire 400 is inserted through the connector pin 54 and later, is removed from the connector pin 54, Sundquist does not disclose that its guide wire 400 is “not easily removed” from its connector pin 54 or its lead body 12 (see Sundquist Fig. 1A). Accordingly, the Examiner fails to establish that Sundquist discloses “a rod permanently disposed within the central lumen at the proximal end of the lead body” as recited in claim 1 and “a cap physically and permanently attached to the rod” as recited in claim 3. 3 https://www.merriam-webster.com/dictionary/permanent (last accessed April 20, 2020). Appeal 2019-005726 Application 15/179,840 7 As both of the Examiner’s rejections presently before us are predicated on these incorrect findings, we reverse the Examiner’s rejections on the record presently before us. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 7, 8, 10 102(b) Sundquist 1–4, 7, 8, 10 9, 20 103(a) Sundquist, Calzada 9, 20 Overall Outcome 1–4, 7–10, 20 REVERSED Copy with citationCopy as parenthetical citation