Ex Parte Dahlberg

Patent Trial and Appeal Board

Aug 11, 2016

13550292 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/550,292 07/16/2012
36802 7590 08/15/2016
PACESETTER, INC
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
Kenneth Dahlberg
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.
Al2P2008 3980
EXAMINER
KAHELIN, MICHAEL WILLIAM
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH DAHLBERG
Appeal2014-007765
Application 13/550,292
Technology Center 3700
Before JOHN C. KERINS, FREDERICK C. LANEY, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kenneth Dahlberg (Appellant1) appeals under 35 U.S.C. § 134 from
the Examiner's final decision rejecting claims 1-20. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is Pacesetter, Inc., dba St.
Jude Medical, Cardiac Rhythm Management Division. Br. 3.
Appeal2014-007765
Application 13/550,292
SUMMARY OF INVENTION
Appellant's invention relates "to implantable medical leads with
improved torque transferring ability." Spec. i-f 1. Claim 1, reproduced below
from page 10 (Claims Appendix) of the Appeal Brief, is representative of the
claimed subject matter:
1. An implantable medical lead comprising:
an outer lead package comprising:
an outer insulating tubing running from a proximal
lead portion to a distal lead portion and having a lumen; and
a lead header made of an electrically insulating
material and having a header lumen; and
an inner lead package comprising:
a connector pin connectable to an implantable
medical device;
a helical fixation element;
an inner conductor coil having a proximal end
electrically coupled to said connector pin and a distal end
electrically coupled to said helical fixation element;
a connector ring connectable to said implantable
medical device;
a ring electrode;
an outer conductor coil having a proximal end
electrically connected to said connector ring and a distal end
electrically connected to said ring electrode; and
an inner insulating tubing coaxially arranged
relative to and between said outer conductor coil and said inner
conductor coil, wherein said inner lead package is at least partly
arranged in said lumen of said outer insulating tubing and said
header lumen, and said inner lead package is rotatable relative
to said outer lead package to translate the fixation element
relative to the fixed outer lead package.
Independent claim 19 is directed to an implantable medical lead and includes
similar limitations. See Br. 13-14.
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Application 13/550,292
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Fischer US 6,269,272 Bl July 31, 2001
He US 6,582,441 B 1 June 24, 2003
Casavant US 7,027,876 B2 Apr. 11, 2006
Osypka US 2007 /0299493 A 1 Dec. 27, 2007
Brandt US 2009/0259283 Al Oct. 15, 2009
REJECTIONS
Claims 1--4, 7, 9-12, and 15-20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brandt and Osypka.
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brandt; Osypka; and Casavant
Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brandt, Osypka, and He.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Brandt, Osypka, and Fischer.
ANALYSIS
As Appellant has not presented arguments for the patentability of
claims 2-20 apart from claim 1 (see Br. 6-9), we select claim 1 as
representative, treating claims 2-20 as standing or falling with representative
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Brandt
discloses the invention substantially as claimed, including, inter alia, an
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Application 13/550,292
outer lead package including an outer insulative tubing (sheath 60)2 and a
lead header (distal end of sheath 60); and an inner lead package (cardiac lead
54), the inner lead package including a helical fixation element (fixation
helix 84) and being "slidable and movable with respect to the outer lead
package to translate the fixation element relative to the fixed outer lead
package." Final Act. 2 (citing Brandt, i-fi-f 16, 22, 24, 26, 28, and 29). The
Examiner relies on Osypka to demonstrate that the recited electrodes,
conductor coils, intermediate tubing, and proximal connectors are
conventional and, therefore, obvious additions to the Brandt cardiac lead
assembly. Id. at 2-3.
Appellant disagrees with the Examiner's findings and makes several
assertions of error. First, Appellant makes arguments about the Brandt
sheath: "the sheath of Brandt is not by definition part of the lead body, but
is disposed over the lead body," "the sheath of the Brandt lead system does
not include a lead header as included in the outer lead package," and "the
sheath of the Brandt system does not run from a proximal lead portion to a
distal lead portion." Br. 8. We find these arguments to be unpersuasive for
the reasons stated by the Examiner. See Ans. 9 (citing Brandt, i1i-f16, 22,
Fig. 2A). Namely, Brandt discloses that its "cardiac lead assembly 50
includes ... an outer sheath 60" (Brandt i-f 16}-we note that although
Appellant argues that Brandt's sheath is not part of the "lead body" (Br. 8),
claim 1 does not recite a lead body, but rather requires "an outer lead
package" (id. at 10). Appellant does not direct us to, nor does our review
reveal, any discussion or definition in the Specification that would preclude
2 Parentheticals refer to the terminology of Brandt.
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Appeal2014-007765
Application 13/550,292
Brandt's sheath 60 from being considered part of an "outer lead package."
Regarding Appellant's other arguments, Appellant does not convincingly
explain why a distal end portion of Brandt's sheath 60 cannot be construed
as the recited lead header, and outer sheath 60 extends from a proximal lead
portion to a distal lead portion (Brandt Fig. 2A; see also id. i-f 20
("According to other embodiments, the outer sheath 60 is dimensioned such
that it can extend over the entire outer surface 88 of the lead body 54. ") ).
Appellant next argues that "Brandt does not disclose an inner lead
package (including the inner and outer coil conductors) that rotates relative
to an outer insulating tube of the lead body ... and the lead header to
translate the fixation helix relative to the outer surface of the lead body."
Br. 8. We are not persuaded by this argument. Initially, we note that the
Examiner did not rely on Brandt to disclose the inner and outer conductor
coils. See Final Act. 2-3; see also Ans. 10. Additionally, as noted by the
Examiner, there is no structure required by claim 1 to effect the
transformation of rotational input to translational output (see Ans. 11 ), nor
do we see any requirement that the claimed device itself effect such
transformation. As also noted by the Examiner, "a user could hold the
sheath ( 50) [sic] of Brandt and provide a pushing and twisting motion to lead
( 54) and therefore meet the functional limitation of the claimed system," as
well as "the 'biting' of Brandt's fixation helix 84 into tissue would translate
the fixation element distally." Id. Thus, Brandt's cardiac assembly 50 is
capable of transforming rotation of lead 54 into translational movement of
fixation helix 84, and Appellant's arguments fail to apprise us of any error.
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Application 13/550,292
Finally, Appellant argues that "there is no teaching in Brandt that the
inner and outer coils rotate together" and that "if one were to rotate the lead
of Brandt the entire lead, including the outer surface and lead header would
rotate relative to the sheath." Br. 8. As stated by the Examiner, "providing
the conductor relationship of Osypka to Brandt would have no bearing on
the rotatabilty of Brandt's lead (54) with respect to sheath (50) [sic]." Ans.
10. In other words, placement of Osypka's structure within Brandt's sheath
60 (in place of lead 54) would result in relative movement of Brandt's sheath
60 and Osypka's coils 26, 32 in use. Furthermore, Appellant's argument
that the lead header would rotate with the lead relative to the sheath is based
on the position that Brandt's sheath is not part of the lead, which we find
unpersuasive for the reasons discussed above. The Examiner relies on a
distal portion of Brandt's sheath 60 to be the recited lead header (see Final
Act. 2), which would necessarily rotate with sheath 60 rather than with lead
54. Therefore, Appellant has failed to persuasively convince us of error in
the Examiner's findings or reasoning.
Accordingly, for the foregoing reasons, we sustain the Examiner's
rejection of independent claim 1, and of claims 2-20 that fall with claim 1,
as being unpatentable over Brandt and Osypka.
DECISION
The Examiner's decision to reject claims 1-20 is affirmed.
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Application 13/550,292
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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