Wahlstrand, Carl D.Download PDFPatent Trials and Appeals BoardOct 29, 201914693088 - (D) (P.T.A.B. Oct. 29, 2019) 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. 14/693,088 04/22/2015 Carl D. Wahlstrand 1023-537US03/ P022066.USC4 8581 71996 7590 10/29/2019 SHUMAKER & SIEFFERT , P.A 1625 RADIO DRIVE , SUITE 100 WOODBURY, MN 55125 EXAMINER MARLEN, TAMMIE K ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 10/29/2019 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): pairdocketing@ssiplaw.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 CARL D. WAHLSTRAND ____________________ Appeal 2017-009543 Application 14/693,088 Technology Center 3700 ____________________ Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and BRANDON J. WARNER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–12. Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 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 Medtronic, Inc. Appeal Br. 3. Appeal 2017-009543 Application 14/693,088 2 THE CLAIMED SUBJECT MATTER Claims 1 and 6 are independent. Claims 2–5 depend from claim 1. Claims 7–12 depend from claim 6. Claim 1 is reproduced below. 1. A tissue stimulation system, comprising: at least one implantable neurostimulation lead; and an implantable neurostimulator comprising a header having at least one connector assembly configured for respectively receiving the at least one neurostimulation lead, a circuit board having programming circuitry, a flex circuit coupled between the at least one connector assembly and the circuit board, and a case to which the header is coupled, the case including a hermetically sealed compartment enclosing the circuit board and the flex circuit. REJECTIONS2 References Basis Claims Hornfeldt3 § 102(a)(1) 1–12 Funderburk Patent4 § 102(a)(2) 1–12 Funderburk PGPUB5 § 102(a)(1) 1–12 OPINION The claims each recite a “flex circuit.” Much of the dispute between Appellant and the Examiner concerns the meaning of the term “flex circuit.” The Examiner, for example, determines that “[a] flex circuit is considered to 2 A number of rejections were withdrawn in the Examiner’s Answer. Ans. 3. 3 US 2005/0228456 A1, published Oct. 13, 2005. 4 US 8,738,138 B2, issued May 27, 2014. 5 US 2012/0221074 A1, published Aug. 30, 2012. Appeal 2017-009543 Application 14/693,088 3 be an electrical circuit that is flexible.” Non-Final Act. 3. Appellant faults the Examiner for “provid[ing] no evidence of record to support the assertion that ‘a flex circuit is considered to be an electrical circuit that is flexible.’” Appeal Br. 10. Appellant contends that “one of ordinary skill in the art would understand the flexible tape interconnect 66 [from its Specification] is a ‘flex circuit.’” Id. at 9. Appellant, however, is guilty of the same offense alleged against the Examiner (i.e., providing no record evidence to support its proposed construction of how one of ordinary skill in the art would understand the term “flex circuit”). Appellant’s Specification does not use the term “flex circuit.” There is also no evidence in the record, from the Examiner or Appellant, supporting either proposed construction of “flex circuit.” Based on the record before us, both constructions seem equally plausible. Accordingly, we reject claims 1–12 under 35 U.S.C. § 112(b) as indefinite. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112[(b)], as indefinite.”). Because we determine the claims to be indefinite, and addressing the disputed “flex circuit” limitation would require speculation on our part, we do not reach the merits of the anticipation rejections. Instead, we reverse those rejections pro forma. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims Appeal 2017-009543 Application 14/693,088 4 under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/ Basis Affirmed Reversed New Ground 1–12 102(a)(1) Hornfeldt 1–12 1–12 102(a)(2) Funderburk Patent 1–12 1–12 102(a)(1) Funderburk PGPUB 1–12 1–12 112(b) Indefiniteness 1–12 Overall Outcome 1–12 1–12 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1–12 under 35 U.S.C. § 112(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, Appeal 2017-009543 Application 14/693,088 5 and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation