Pulse Technologies, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 202013905851 - (D) (P.T.A.B. Mar. 31, 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. 13/905,851 05/30/2013 Andrew E. Fisk PUL-00003US 1028 139939 7590 03/31/2020 Massina Patent & Trademark Law PLLC 702 Route 113 Suite B Souderton, PA 18964 EXAMINER BEHRINGER, LUTHER G ART UNIT PAPER NUMBER 3793 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): docketing@massinaptl.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW E. FISK Appeal 2019-004754 Application 13/905,851 Technology Center 3700 Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and KENNETH G. SCHOPFER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–9 and 21.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. According to Appellant, the “invention relates to a biocompatible, implantable electrode for electrically active medical devices.” Spec. 1, 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 Pulse IP, LLC. Appeal Br. 2. 2 Although claims 10–20 are pending, these claims are withdrawn from consideration. See, e.g., Final Action 1. Appeal 2019-004754 Application 13/905,851 2 ll. 9–10. Claims 1 and 21 are the independent claims under appeal. Below, we reproduce claim 1, with additional formatting added, as illustrative of the appealed claims: 1. An electrode comprising a solid, monolithic substrate having an outer peripheral surface; the outer peripheral surface having a topography defined by a plurality of voids distributed about the outer peripheral surface and extending a depth through the substrate; said voids having a depth through the substrate of from about 50 nm to about 500 nm; and said voids having a width of from about 50 nm to about 500 nm; said voids being spaced from adjacent voids a distance of from about 50 nm to about 250 nm. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1–9 and 21 under 35 U.S.C. § 102(a)(2) as anticipated by Larsen3; II. Claims 1–9 and 21 under 35 U.S.C. § 103 as unpatentable over Larsen and Helland4; and III. Claims 1–9 and 21 under 35 U.S.C. § 103 as unpatentable over Larsen, Vorobyev5, and Helland.6 3 Larsen et al., US 2013/0296678 A1, published Nov. 7, 2013 (“Larsen”). 4 Helland et al., US 5,318,572, iss. June 7, 1994 (“Helland”). 5 Vorobyev, A.Y., and Guo, Chunlei, Femtosecond laser nanostructuring of metals, Optics Express Vol. 14, No. 6 (2006) (“Vorobyev”). 6 Based on the Examiner’s statements in the Answer, we understand that this rejection is based on Larsen, Vorobyev, and Helland, rather than only Larsen and Vorobyev. See, e.g., Answer 8. Appeal 2019-004754 Application 13/905,851 3 ANALYSIS Rejection I—Anticipation rejection of claims 1–9 and 21 Independent claim 1 recites, in relevant part, a plurality of voids distributed about the outer peripheral surface [of a substrate] and extending a depth through the substrate; said voids having a depth through the substrate of from about 50 nm to about 500 nm; and said voids having a width of from about 50 nm to about 500 nm; [and] said voids being spaced from adjacent voids a distance of from about 50 nm to about 250 nm. Appeal Br., Claims App. (emphasis added). In the Final Office Action, the Examiner previously found that Larsen “fails to disclose . . . [a substrate with] voids . . . spaced from adjacent voids a distance of from about 50 nm to about 250 nm.” Final Action 4. Nonetheless, in the Answer, the Examiner now finds that Larsen discloses the claimed void spacing. Answer 3–4. Specifically, the Examiner determines that [Appellant’s] [S]pecification is silent as to where the claimed dimensions of void spacing (i.e.[,] from about 50 nm to about 250 nm) is measured. These dimensions are interpreted as being measured from the center of the voids. In [paragraph 64], Larsen discloses that the manufacturing process yields “an average pore dimension . . . of about 100 nm.” When the term “adjacent” is interpreted according to its broadest reasonable interpretation, it is seen that pores having an average dimension of 100 nm and being adjacent would be spaced from adjacent voids a distance of from about 50 nm to about 250 nm when measuring from the center of the voids. Id. at 4 (citing Larsen ¶ 64). Even if we agree with the Examiner both that Larsen’s paragraph 64 discloses an average pore dimension of Appeal 2019-004754 Application 13/905,851 4 about 100 nm, and that the claimed distance between adjacent voids may be measured from a void’s center, the Examiner still does not support adequately that Larsen discloses voids spaced from adjacent voids a distance of from about 50 nm to about 250 nm, as claimed. It may be, for example, that Larsen’s voids with average pore dimensions of about 100 nm have a distance of 500 nm therebetween. We note that the Examiner does not support adequately that Larsen describes adjacent voids (with average pore dimensions of about 100 nm) that virtually touch one another, such that the distance between two such void centers would be about 100 nm. Accordingly, we do not sustain the Examiner’s anticipation rejection of claim 1. Further, we do not sustain the Examiner’s rejection of claims 2–9 that depend from, and the Examiner rejects with, claim 1. Still further, we do not sustain the Examiner’s anticipation rejection of independent claim 21, which includes a recitation similar to that discussed above. Appeal Br., Claims App. (Claim 21) (“said voids being spaced from adjacent voids a distance of from about 50 nm to about 250 nm.”). Rejection II—Obviousness rejection based on Larsen and Helland of claims 1–9 and 21 For the reasons discussed above, Larsen does not disclose independent claim 1’s recitation of a substrate with voids spaced from adjacent voids a distance of from about 50 nm to about 250 nm. The Examiner does not rely on Helland to disclose the claimed void spacing. See, e.g., Answer 4–5. Instead, the Examiner finds that Helland describe that “it is known that increasing the surface area of an electrode reduces polarization effect and increases capacitance” (id at 8 (citation to Helland omitted)), and that “Larsen explicitly states that the ‘ability of an electrode to transfer current is Appeal 2019-004754 Application 13/905,851 5 proportional to the surface area of the electrode’” (id. 11 (citation to Larsen omitted)). According to the Examiner, [a]s to the issue of optimization: both . . . Larsen . . . and . . . Helland . . . establish that surface area is a variable that, when increased, improves electrode function. In Larsen, the improvement is recognized as an increase in the ability of the electrode to transfer current. In Helland, the improvement is recognized as low sensing impedance and improved sensing. Appellant contends that [sic—In Appellant’s claims?] the void spacing would be the variable being optimized. As the spacing of the voids is directly related to surface area, it is seen that the void spacing and the surface area are equivalent result-effective variables. Furthermore, the art only admits of a finite number of solutions suitable to achieve the claimed spacing, including use of femtosecond laser ablation. Id. at 11. We determine that the above is inadequate to support the Examiner’s obviousness rejection based on Helland. Specifically, the Examiner does not support adequately that void spacing on a substrate is a result-effective variable, such that its optimization would be obvious. Reply Br. 3. This is because even if we agree with the Examiner that, based on Larsen’s or Helland’s disclosure, it would have been obvious to increase the substrate’s surface area, it is unclear to what extent increasing or, in fact, decreasing, any particular variable or variables (such as void depth, surface roughness of the void walls, void diameter, and/or void shape) would increase the overall substrate surface area. For example, as Appellant points out, Larsen itself discloses that some increases in the number of pores in the substrate increases substrate surface area, while some further increases in the number of pores decreases substrate surface area. Reply Br. 3 (citing Larsen Table 1). Appeal 2019-004754 Application 13/905,851 6 For similar reasons, the Examiner does not support adequately that there is “a teaching, suggestion, [or] motivation” to combine the references to provide a substrate with voids spaced from adjacent voids a distance of from about 50 nm to about 250 nm. Answer 11 (citation omitted). For the above reasons, we do not sustain the Examiner’s obviousness rejection of claim 1 based on Larsen and Helland. Further, we do not sustain the obviousness rejection of claims 2–9 that depend from, and the Examiner rejects with, claim 1. Still further, we do not sustain the Examiner’s obviousness rejection based on Larsen and Helland of independent claim 21, which includes a recitation similar to that discussed above. Rejection III—Obviousness rejection based on Larsen, Vorobyev, and Helland of claims 1–9 and 21 For the reasons discussed above under the heading Rejection I, Larsen does not disclose independent claim 1’s recitation of a substrate with voids spaced from adjacent voids a distance of from about 50 nm to about 250 nm. The Examiner relies on Vorobyev to disclose voids spaced from adjacent voids a distance of from about 50 nm to about 250 nm, as claimed. See, e.g., Final Action 4. The Examiner does not support adequately that it would have been obvious to modify Larsen, based on Vorobyev’s disclosure, such that Larsen’s voids are spaced from adjacent voids a distance of from about 50 nm to about 250 nm. This is because, as Appellant points out, the portions of Vorobyev on which the Examiner relies “show results for only [a substrate formed of] one metal, namely copper.” Appeal Br. 5. In contrast, Larsen discloses that its substrate “is made of platinum[,] . . . platinum alloy, . . . stainless steel, nitinol, nickel-cobalt alloy, titanium, gold, niobium, tantalum, ruthenium, palladium, or palladium alloy.” Larsen ¶¶ 6–7. Appeal 2019-004754 Application 13/905,851 7 Without further evidence or explanation by the Examiner, we agree with Appellant that “there is no basis” to space the voids in Larsen’s substrate a distance of from about 50 nm to about 250 nm, based on Vorobyev’s disclosure of such spacing on a substrate formed of a different material. Appeal Br. 5. Notwithstanding the above, the Examiner determines the following: Given that it is known that increasing the surface area of an electrode reduces polarization effect and increases capacitance ([s]ee Helland . . . ), it would have been obvious . . . to modify Larsen to provide voids being spaced from adjacent voids a distance of from about 50 nm to about 250 nm [as taught by Vorobyev] and, through routine experimentation, provide an electrode having small widths, spacing and depth, including those claimed in the instant invention, which would result in a low sensing impedance and improved sensing. Answer 8 (citations omitted). The above is inadequate to support the Examiner’s obviousness rejection based, in part, on Vorobyev and Helland. Specifically, for reasons similar to those discussed under the heading Rejection II, above, the Examiner does not support adequately that void spacing on a substrate is a result-effective variable, such that its optimization would be obvious, or that it otherwise would have been obvious to combine the references to provide a substrate with voids spaced as claimed. CONCLUSION We reverse the Examiner’s anticipation and obviousness rejections of claims 1–9 and 21. Appeal 2019-004754 Application 13/905,851 8 In summary: REVERSED Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 21 102 Larsen 1–9, 21 1–9, 21 103 Larsen, Helland 1–9, 21 1–9, 21 103 Larsen, Vorobyev, Helland 1–9, 21 Overall Outcome 1–9, 21 Copy with citationCopy as parenthetical citation