Medtronic, Inc.

Patent Trials and Appeals Board

Jul 19, 2021

2020004517 (P.T.A.B. Jul. 19, 2021)

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.
15/363,178 11/29/2016 Darren A. Janzig 0134.000714US02 4914
64619 7590 07/19/2021
MEDTRONIC, INC. (NEURO/MRG)
710 MEDTRONIC PARKWAY NE
MS-LC340
MINNEAPOLIS, MN 55432-5604
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
07/19/2021 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):
ptodocketing@mrgs.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DARREN A. JANZIG, ANDREW J. THOM,
CHRIS J. PAIDOSH, BRAD C. TISCHENDORF, and
GERALD G. LINDNER

Appeal 2020-004517
Application 15/363,178
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 7–13, and 15–23. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Medtronic, Inc. Appeal Br. 3.
Appeal 2020-004517
Application 15/363,178

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ILLUSTRATIVE CLAIM
The claimed subject matter relates to “lead connectors” for electrical
connections that may be used, for example, in “[i]mplantable active medical
devices, such as cardiac rhythm management devices (pacemakers and
defibrillators) and a variety of implantable muscle/nerve stimulators.”
Spec. 1, ll. 8–9. Claims 1 and 13 are the independent claims in the Appeal.
Claim 1 illustrates the subject matter at issue:
1. A method of forming a medical device lead connector
comprising:
sputtering a metallization layer that has a thickness in a
range from 10 nanometers to less than 1 micrometer onto only a
diffusion bond area portion of an electrically insulating ring;
diffusion bonding the electrically insulating ring between
a first electrically conducting contact ring and a second
electrically conducting contact ring to form an aligned joined
element; and
joining a plurality of aligned joined elements in axial
alignment to form a lead connector having a lead aperture.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Callol et al. (“Callol”) US 6,174,329 B1 Jan. 16, 2001
Janzig et al. (“Janzig”) US 2008/0208278 A1 Aug. 28, 2008
Floyd et al. (“Floyd”) US 2010/0179627 A1 July 15, 2010
O.M. Akselsen, Diffusion bonding of ceramics, 27 Journal of Materials
Science 569 (1992) (“Akselsen”)
I.I. Gab et al., Metal-To-Sapphire Brazed and Diffusion Bonded Windows
for Optics, Ultra-High Vacuum Technics and Electronics for
Maintenance at Temperatures 77–800 K, Proc. Int’l Conf. High
Temperature Capillarity (June 29–July 2, 1997, Cracow, Poland)
(N. Eustathopoulos & N. Sobczak, eds.) (“Gab”)

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REJECTIONS
I. Claims 1–3, 7–13, and 15–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Janzig, Gab, Floyd, and Callol.
II. Claims 1–3, 7–13, and 15–23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Janzig, Askelsen, Floyd, and Callol.2
RELATED CASES
At the time the Appeal Brief was filed in the present case, a Notice of
Appeal had been filed in at least the related U.S. Application 13/088,913
(see Spec. 1), wherein the Board issued a Decision on September 30, 2016
(Appeal 2015-001305). The Appellant fails to identify this related Appeal.
See Appeal Br. 3.
We remind the Appellant and counsel to review prior and pending
proceedings before the Board, as well as any other qualifying matters, so as
to ensure that all related cases, within the scope of 37 C.F.R.
§ 41.37(c)(1)(ii), are identified. Representations to the Office are subject to
the requirements of, e.g., 37 C.F.R. §§ 1.56, 11.18, and 11.303.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Each of Rejection I (based on the combination of Janzig, Gab, Floyd,
and Callol) and Rejection II (based on the combination of Janzig, Askelsen,

2 We regard the Examiner’s mistaken inclusion of claim 6 in Rejection II as
inadvertent. See Final Act. 7. Claim 6 is canceled. See Appeal Br., Claims
App. 1.
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Application 15/363,178

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Floyd, and Callol) is applied to all claims in the Appeal (claims 1–3, 7–13,
and 15–23).
Claims 1 and 13 are the independent claims in this Appeal. With
respect to each of Rejection I and Rejection II, the Appellant asserts error in
the rejection of independent claims 1 and 13. Appeal Br. 8–14.
In rejecting claims 1 and 13, the Examiner cites Janzig’s teaching of a
“metallization layer” and relies upon Callol to teach the recited “sputtering”
technique, for creating the “metallization layer.” Final Act. 4–9. According
to the Examiner:
[I]t would have been obvious to a PHOSITA at the time of the
applicant’s invention to use sputtering to add the metallization
layer of Janzig as Callol teaches that this is a known method of
doing so at the time of the applicant’s invention and would have
resulted in the recited structure of Janzig without affecting its
operation. Additionally, the metallization layer additionally
provides the benefit of protecting the medical device ([Callol]
Col. 4, lines 33–48).
Id. at 6. See also id. at 8–9.
The Appellant does not dispute that the cited references teach all the
limitations of claims 1 and 13, but the Appellant argues that the Examiner
failed to provide an adequately supported reason for combining the above-
identified teachings of Janzig and Callol. See Appeal Br. 8–12.
The Appellant contends (see Appeal Br. 10–11) that the Examiner
does not provide sufficient evidence for the position that Callol’s sputtering
technique may be used to provide Janzig’s metallization layer, “without
affecting [Janzig’s] operation” (Final Act. 6). According to the Appellant,
none of the cited references teach or suggest that a metallization layer
formed by sputtering would be suitable to use with the claimed “diffusion
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bonding” of claims 1 and 13. Appeal Br. 10–11. The only support for the
Examiner’s position, the Appellant argues, is found in the Appellant’s
Specification, such that “the Examiner’s reasoning is based on
impermissible hindsight.” Id. at 11.
Janzig teaches an “electrically insulating ring . . . metallized on
opposing edges.” Janzig ¶ 51. The Examiner points out that, although
Janzig does not teach how the metallized layer is formed, “it must be applied
in some way.” Answer 8. Janzig indicates that the lead connector (which
includes the “electrically insulating ring”) “can be formed by any useful
method.” Janzig ¶¶ 50–51. See id. Figs. 4A, 4B, 5, 6. Further, as the
Examiner finds, “Callol teaches that sputtering is a known method for
applying a metallization layer to an implantable medical device, and is
equivalent to a myriad of other techniques.” Answer 8. Indeed, Callol
states: “A metallic coating . . . can be applied by electroplating, evaporation,
plasma-vapor deposition, cathodic-arc deposition, sputtering, ion
implantation, electrostatically, electrochemically, a combination of the
above, or the like.” Callol col. 6, ll. 35–39.
But the existence of the “sputtering” technique in the prior art —
notwithstanding its lack of inconsistency [compatibility] with Janzig — is
not sufficient to establish a reason for employing this technique for creating
a metallization layer for use with Janzig’s insulating ring and other features.
Thus, as the Examiner maintains, “the metallization layer additionally
provides the benefit of protecting the medical device,” because Callol
teaches the protective attribute of a sputtered metallic layer. Final Act. 6.
See also id. at 9 (“[S]puttering the metallization layer additionally provides
the benefit of protecting the medical device”) (citing Callol col. 4, ll. 33–48).
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The Appellant disputes the Examiner’s position that Callol’s teaching
of a protective layer provides an adequate reason for combining the
identified teachings of Janzig and Callol. See Appeal Br. 9–10. The
Appellant argues:
Callol describes coating a stent with a protective layer to
protect from scratches, flaking, galvanic corrosion, and to
improve both blood and bio-compatability [sic]. Callol
abstract. Janzig as modified by the Examiner has insulating
rings of sapphire or ceramic (Office Action at page 5). The
Examiner has not provided any evidence that sapphire or
ceramics used in Janzig are subject to scratches, flaking, and
galvanic corrosion, or that the bio-compatability [sic] of the
sapphire or ceramics would be improved by the sputtered
metallization layer of Callol. Furthermore, the metallization
layer is only sputtered onto a diffusion bond area portion as
recited in claim 1 or only onto planar surfaces as recited in
claim 13. As shown in FIG. 6 of the present specification . . . ,
such surfaces are not exposed after the diffusion bonding
process. Therefore, the benefits asserted by the Examiner
would not be realized even if such metallization could provide
these benefits.
Appeal Br. 9.
As to the significance of adding a protective layer to Janzig’s
insulating ring, the Examiner states: “all materials can be scratched by a
material harder than it, so the additional, sputtered layer of Callol would add
an additional layer of protection to help prevent scratching.” Final Act. 2.
However, as the Appellant points out (see Appeal Br. 9), Janzig does
not reflect any particular vulnerability of its insulating ring. By contrast,
Callol relates specifically to “coatings applied to stents to make them
radiopaque and coatings to protect the stent and the radiopaque layer.”
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Callol col. 1, ll. 8–10. As Callol explains, such radiopaque coatings are
notoriously delicate:
The radiopaque layer is thin, in one preferred
embodiment it is about 1.0 to 50 microns thick. Since the layer
is so thin, it is subject to scratching or flaking when the stent is
being delivered intraluminally. Accordingly, it is an object of
the invention to protect the stent and particularly the radiopaque
layer with a more durable protective layer that is resistant to
scratching and general mishandling.
Id. col. 1, l. 66 – col. 2, l. 5. See also id. col. 4, ll. 29–31 (“[T]he radiopaque
coating is prone to scratching and handling mishaps resulting in scratches, a
chipped coating, flaking, or other defects.”)
Furthermore, the other conundrum, identified by the Appellant (see
Appeal Br. 9), concerns whether the protective benefits of Callol would be
inconsistent with claim 1’s limitation of providing the “metallization layer”
“onto only a diffusion bond area portion of an electrically insulating ring.”
In view of this feature, the purportedly protective metallization would be
applied only to the portion of the insulating ring that would be “diffusion
bond[ed]” to an “electrically conducting contact ring” — i.e., a portion that
is “not exposed after the diffusion bonding process” and, therefore, cannot
benefit from any protection that a metallized layer might provide. Id. A
similar issue applies to claim 13, which also limits the sputtered
metallization layer to only a portion of the insulating ring, reciting:
“sputtering a metallization layer . . . onto only planar surfaces of an
electrically insulating sapphire or a ceramic ring.”
In response, the Examiner maintains that the addition of Callol’s
metallized layer would provide a benefit to the combined teachings of the
other references:
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[T]he metallization la[y]er is necessarily added prior to
bonding, and thus the metallization layer will be open to the
environment prior to bonding with the conducting contact ring.
During this time, Callol makes clear that a metallization layer
with a thickness of 10 nanometers can act as a protective layer.
Answer 9.
Yet, the Examiner identifies no support for the finding that Janzig’s
insulating ring would face an appropriate hazard after addition of the
metallized layer, but prior to bonding with an electrically conductive contact
ring. Moreover, the Examiner’s analysis does not alleviate the peculiarity
that the proposed combination would add a protective layer only to the
portion of the insulating ring (e.g., claim 1’s recitation of “only a diffusion
bond area portion of an electrically insulating ring”) that would be least in
need of protection, based upon the present record — whereas no protective
layer would be afforded to the remainder of the insulating ring.
In reviewing an Examiner’s determinations, the Board “must examine
the relevant data and articulate a satisfactory explanation for its action
including a rational connection between the facts found and the choice
made.” In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (quoting
Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29,
43 (1983) (internal quotation marks and citation omitted)). These principles
apply to the determination of a reason to combine the teachings found in the
prior art (see id. at 1383), which — as the Supreme Court has emphasized —
require “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007).
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In the rejections in this Appeal, the Examiner’s findings do not
adequately support the stated reason for combining the prior art teachings, as
discussed above. Therefore, we do not sustain the rejections of independent
claims 1 and 13, along with their respective dependent claims, under 35
U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 7–13,
15–23
103(a) Janzig, Gab, Floyd,
Callol
1–3, 7–13,
15–23
1–3, 7–13,
15–23
103(a) Janzig, Akselsen,
Floyd, Callol
1–3, 7–13,
15–23
Overall
Outcome
1–3, 7–13,
15–23

REVERSED