Ex Parte Dahl et alDownload PDFPatent Trial and Appeal BoardSep 28, 201612464655 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/464,655 05/12/2009 45458 7590 09/30/2016 SCHWEGMAN LUNDBERG & WOESSNER/BSC POBOX2938 MINNEAPOLIS, MN 55402 Scott Dahl 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. 279.M91US1 2006 EXAMINER PHAM, MINH DUC GIA ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): uspto@slwip.com SLW@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT DAHL, JOHN H. TANGREN, KEVIN J. ELY, DOUGLAS J. BRANDNER, and WILLIAM J. LINDER Appeal2014-006027 Application 12/464,655 Technology Center 3700 Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and BRADLEY B. BAY AT, Administrative Patent Judges. BAY AT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9 and 11-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 28, 2013), the Examiner's Answer ("Ans.," mailed Feb. 14, 2014), and the Final Office Action ("Final Act.," mailed Apr. 24, 2013). 2 Appellants identify the real party in interest as Cardiac Pacemakers, Inc. Br. 3. Appeal2014-006027 Application 12/464,655 CLAIMED SUBJECT MATTER Appellants' invention "relates generally to medical devices and, more particularly, to medical devices including a liquid filled housing." Spec. 1:8-10. Claims 1, 20, and 21 are the independent claims on appeal. Claim 1 is illustrative of the subject matter on appeal. 1. An implantable medical device comprising: [a] a hermetically sealed metal housing defining an interior volume; [b] a component module disposed within the interior volume, the component module comprising a circuit board, the component module displacing a portion of the interior volume; and [ c] a liquid composition disposed within the housing, the liquid composition filling at least 80% of the interior volume not displaced by the component module; [ d] the liquid composition comprising a liquid material with a dielectric strength of greater than about 0.5 kV/mm. Br. 19, Claims Appendix (with added bracketed matter). REJECTIONS The following rejections are before us for review on appeal. I. Claims 1-5 and 11-21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gauglitz3 and Wotherspoon.4 II. Claims 6-9 and 11-13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gauglitz, W otherspoon, and Tousignant. 5 Final Act. 2-9. 3 Gauglitz et al., US 2005/0119709 Al, published June 2, 2005. 4 Wotherspoon, US 2008/0143619 Al, published June 19, 2008. 5 Tousignant, US 5,411,077, issued May 2, 1995. 2 Appeal2014-006027 Application 12/464,655 ANALYSIS Rejection I Independent claims 1, 20, 21 and dependent claims 2-5 and 11-19 As an initial matter, we note that Appellants argue claims 1-5 and 11- 21 as a group. Br. 10. We select claim 1 as being representative. Thus, claims 2-5 and 11-21 stand or fall with independent claim 1. See C.F .R. § 41.37(c)(l)(iv). The Examiner maintains that the combination of Gauglitz and Wotherspoon would have rendered the subject matter of the above claims obvious to a person of ordinary skill in the art at the time of Appellants' invention. Ans. 2-3. In rejecting independent claim 1, the Examiner finds that Gauglitz discloses elements [a] and [b] of the claimed device, but is deficient as to elements [c] and [d]. Final Act. 3. The Examiner finds that the teachings of W otherspoon remedy those deficiencies. Id. And the Examiner concludes that: It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the implantable medical device as taught by Gauglitz, with a liquid composition filling the residual volume as taught by W otherspoon, since such a modification would provide the predictable results of an implantable medical device with increased volts-per-mil breakdown strength of circuit elements and adjacent wires and circuit traces housed within an implantable medical device by using dielectric fluids. Id. at 4. Appellants do not dispute the Examiner's findings as to any of the claimed elements [a]-[d]. Rather, Appellants raise several arguments challenging the proposed combination. We address each in the order presented in Appellants' brief. 3 Appeal2014-006027 Application 12/464,655 First, Appellants argue that there is no rationale for one skilled in the art to combine Gauglitz and Wotherspoon. Br. 10. In support of this argument, Appellants assert that the liquid in Figure 2 of W otherspoon, relied upon by the Examiner, is water, and one of skill in the art would not be motivated to fill the housing containing electronic components with water because of the risk of corrosion and subsequent failure. Indeed, filling the housing that has the electronic components with water would defeat the purpose of having the housing be hermetically sealed. Id. at 11. We are not persuaded by Appellants' argument because W otherspoon teaches that "the electronic circuit 3 [in Figure 2] is hermetically sealed within a water tight seal 4, which is disposed inside the balloon or bag 1" (Wotherspoon i-f 24; see Ans. 4), thus excluding passage of water to risk corrosion or device failure. Moreover, Appellants do not challenge the Examiner's actual rationale for combining Gauglitz and Wotherspoon, found in the explicit teachings of Wotherspoon. Ans. 4 (citing Wotherspoon il 18). Wotherspoon discloses that "[t]he fluid comprises a liquid which is substantially electrically insulating .... [and i]n the specific example illustrated, the fluid is water but other liquids and gases may be used." Wotherspoon i-f 18. And "Gauglitz discloses using a gaseous mixture to provide improved insulation properties for an implantable device" (Final Act. 3) by increasing the dielectric strength of the environment within the implantable device. Ans. 4. Second, Appellants contend that the proposed combination would render Gauglitz unsatisfactory for its intended purpose by inhibiting Gauglitz's functionality. Br. 11. According to Appellants, the area with electronics in W otherspoon is not filled with a liquid because it is the 4 Appeal2014-006027 Application 12/464,655 balloon or bag that is filled with a liquid, and "if the housing of Gauglitz was surrounded by a bag functioning as an 'electrically insulating substrate' as taught in W otherspoon, the housing of Gauglitz would necessarily be insulated from creating an electrical connection with an organ or tissue." Id. at 13. Appellants' contention however relies on a false premise, because "the Examiner identified bag 1 [of W otherspoon] as the housing, and the watertight seal 4 function[ing] as a layer to protect electronic module 3 from the fluid within the bag." Ans. 5; see also Final Act. 3. And as the Examiner observes, W otherspoon discloses that "the antenna or electrode 2 is printed on the interior surface of the bag 1 and is connected to the electronic circuit 3 by a connection passing through and sealed to the water tight seal 4 so as to preserve water tightness" (Wotherspoon i-f 24; see Ans. 6), thus providing an electrical connection. Furthermore, claim 1 does not require the area with electronics to be filled with liquid. Although the claim requires a component module (electronics) and a liquid composition disposed within the housing, with each displacing a portion of the interior volume, there is no requirement that the component module be immersed within the liquid composition. Additionally, Appellants' argument that the combination would render Gauglitz inoperable for its intended purpose also fails because the argument appears to be based on the bodily incorporation of the features of W otherspoon into the Gauglitz system, which is not the test for obviousness. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); In re Nievelt, 482 F.2d 965 5 Appeal2014-006027 Application 12/464,655 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures."). Rather, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. The Examiner does not propose any bodily incorporation of W otherspoon into Gauglitz or vice versa. Third, Appellants' argument-that W otherspoon teaches away because it discloses that "[ s ]uch an arrangement may be more suitable for use as a medical or other implant as sharp edges may be avoided and the implant may be made semi-flexible and soft" (Br. 14 (citing Wotherspoon i-f 24 (emphasis omitted))}-is similarly unpersuasive, at least because Appellants do not point to any passage in W otherspoon that criticizes, discredits, or otherwise discourages the use of metal housings. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (A teaching away occurs when a reference discourages one skilled in the art from following the claimed path, or when the reference would lead one skilled in the art in a direction divergent from the path that was taken by the applicant.); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of the alternatives when the disclosure does not criticize, discredit, or otherwise discourage the solution claimed.). Even though sharp edges may exhibit certain disadvantages for W otherspoon' s arrangement, the Examiner finds that Gauglitz's housing may also be fabricated of titanium or titanium alloy. See Ans. 7 (citing Gauglitz i-f 21 ). Appellants do not address this finding. A given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to 6 Appeal2014-006027 Application 12/464,655 combine teachings. See Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another."). We find a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness. In view of the foregoing, we sustain the rejection of independent claim 1, as well as claims 2-5 and 11-21, which fall with claim 1. Dependent claims 6--9 and 11-13 Appellants challenge the rejection of claims 6-9 and 11-13 as unpatentable over Gauglitz, Wotherspoon, and Tousignant because Tousignant "has nothing to do with implantable medical devices and therefore is non-analogous art." Br. 16. In particular, Appellants argue that it is not apparent how a thermal transfer system has any reasonable bearing on implantable medical devices. Id. at 17. "Indeed, how could a condenser 'at a location remote from the heat source' be used in the context of an implantable medical device? Tousignant is not directed towards implantable medical devices nor is Tousignant reasonably pertinent to the particular problem." Id. Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir. 1987). A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would 7 Appeal2014-006027 Application 12/464,655 have commended itself to an inventor's attention in considering his problem. Thus, the purposes of both the invention and the prior art are important in determining whether the reference is reasonably pertinent to the problem the invention attempts to solve. If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same problem, and that fact supports use of that reference in an obviousness rejection. In re Clay, 966 F.2d at 659. Here, the Examiner finds that Tousignant is not within the field of the inventor's endeavor, but is reasonably pertinent to the particular problem with which the inventor is involved. See Ans. 8-9. We agree. Appellants' Specification explains the one problem or disadvantage of filling the residual volume of a medical device housing with a gas or solid is the contribution to degradation and stresses to the electronic components that lead to decreased service life and failure of the medical device. Spec. 3:9-17. Thus, Appellants' invention "includes medical devices where the residual volume is filled with a liquid composition," which offers various advantages. Id. at 3:18-22. Notably, "liquid[s] can serve to evenly distribute pressure throughout the interior volume, thereby minimizing stresses on individual components" (id. at 3 :23-25), "evenly disperse thermal energy originating inside or outside of the housing .... [and] effectively provide a heat sink within the medical device in order to safely absorb and then dissipate any thermal energy that may exist or form within the housing of the medical device" (id. at 4: 1---6). Tousignant discloses that placing thermal transfer liquid in a component housing adjacent to the integrated circuits is particularly useful as a heat sink for microelectronic components, acts as a shock absorber for the circuits, and serves to efficiently cool and maintain the circuits at a stable 8 Appeal2014-006027 Application 12/464,655 operating temperature enabling each component to function properly. See Tousignant 3:52---64, 5:28--48. Accordingly, Tousignant's thermal transfer apparatus arrangement is reasonably pertinent to the particular problem with which Appellants were involved because it teaches the use of a thermal transfer liquid within an electronic component housing to achieve the above-mentioned advantages. One of ordinary skill in the art would have considered Tousignant when seeking to overcome the problem pertaining to the use of gases and solids in an electronic component housing. Thus, because of the matter with which it deals, Tousignant logically would have commended itself to Appellants' attention in considering the problem. Therefore, we sustain the rejection of claims 6-9 and 11-13, which were argued together. See App. Br. 16. DECISION The Examiner's decision to reject claims 1-9 and 11-21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation