Ex Parte Decre et al

Patent Trial and Appeal Board

Jul 31, 2018

13126283 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/126,283 04/27/2011
71996 7590 08/02/2018
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Michel Marcel Jose Deere
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.
Ol l 704-5012US 2134
EXAMINER
YABUT,DIANED
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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 MICHEL MARCEL JOSE DECRE,
JOHANNES CORNELIUS ANTONIUS MULLER,
MICHEL GERAROUS PARDOEL,
and HUBERT CECILE FRANCOIS MARTENS
Appeal2017-007740
Application 13/126,283 1
Technology Center 3700
Before ERIC B. GRIMES, ELIZABETH A. LA VIER,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL .................................
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1---6, 8-11, and 13-21. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM-IN-PART.
1 Appellants state the real parties in interest are Medtronic, Inc. and
Medtronic plc. Appeal Br. 3.
Appeal2017-007740
Application 13/126,283
BACKGROUND
The Specification relates to devices for cranial implantation
comprising a ferrule. Spec. 1 :2--4.
Claim 1 is illustrative, and recites:
1. A device for cranial implantation allowing for adjustment of
positioning of a probe, the device comprising:
a ferrule defining an inner surface, the inner surface forming a
first hole through the ferrule;
electronics and a power source disposed within the first hole of
the ferrule formed by the inner surface;
a lid configured to close the ferrule towards a scalp; and
a plate configured to be placed in the ferrule, the plate defining
a second hole configured to accommodate the probe, wherein
the first hole and the second hole at least partly coincide
enabling accommodation of the probe at least partially within
the first hole and the second hole when the plate is placed in the
ferrule.
Appeal Br. 23 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1, 4--6, 8, 10, 11, 13-15, and 17 stand rejected under 35
U.S.C. § I03(a) (pre-AIA) as unpatentable over Rodriguez2 and
John. 3 Ans. 2; Final Action 4.
2 Rodriguez, US 2007/0233158 Al, published Oct. 4, 2007.
3 John et al., US 2008/0140149 Al, published June 12, 2008.
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Application 13/126,283
2. Claims 2, 3, 16, and 19-21 stand rejected under 35 U.S.C. § I03(a)
(pre-AIA) as unpatentable over Rodriguez, John, and Adams. 4
Ans. 2; Final Action 5.
3. Claim 9 stands rejected under 35 U.S.C. § I03(a) (pre-AIA) as
unpatentable over Rodriguez, John, and Kipke. 5 Ans. 2; Final
Action 7-8.
4. Claim 18 stands rejected under 35 U.S.C. § I03(a) (pre-AIA) as
unpatentable over Rodriguez, John, and Gielen. 6 Ans. 2; Final
Action 8.
DISCUSSION
A. Rejection 1
Rodriguez generally describes "an apparatus for securing a lead
within a burr hole" within a patient's skull. Rodriguez Abstract, ,r 2. The
Examiner finds that Rodriguez teaches a device that meets all the limitations
of claim 1 except that "Rodriguez does not disclose electronics and a power
source disposed within the first hole of the ferrule formed by the inner
surface." Final Action 5. For these features, the Examiner turns to John,
another reference in the field of cranial implantation devices (see id.)
describing ferrules for retaining implantable devices that may also perform
sensing and stimulating functions (see John Abstract). In one embodiment,
John describes a ferrule including a section for removably securing a power
source that includes a connector to power the implantable device. John ,r 36;
4 Adams et al., US 2008/0172068 Al, published July 17, 2008.
5 Kipke et al., US 7,548,775 B2, issued June 16, 2009.
6 Gielen et al., US 6,321,104 Bl, issued Nov. 20, 2001.
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Application 13/126,283
see also Final Action 5 (discussing John ,r,r 35-36, Figs. 1-2). The
Examiner finds:
It would have been obvious to one of ordinary skill in the art at
the time of invention to provide electronics and a power source
inside the ferrule of Rodriguez, as taught by John, in order to
impart functionality to the ferrule and add convenience features
for neural treatments, such as employing sensing as well as
stimulating functions to detect and/or treat neurological
conditions.
Id. (citing John ,r,r 3--4, 8).
We have considered all of Appellants' arguments in support of the
patentability of claim 1 (see Appeal Br. 6-14; see also Reply Br. 2---6), but
we are not persuaded of any reversible error by the Examiner in rejecting
claim 1. Appellants do not appear to dispute that Rodriguez and John
together teach each of the elements of claim 1. Rather, Appellants argue that
the Examiner's combination of the references was faulty; a product of
"plucking" specific features (Appeal Br. 9) and impermissible hindsight (id.
at 11, 13-14). But as demonstrated above, the Examiner's rationale for
starting with the device of Rodriguez and combining the power supply and
electronics from John is grounded in the record, i.e., the advantages of John
reported by John. As the Examiner further explains:
However, the Examiner maintains that imparting localized
electrical functionality within the ferrule of Rodriguez, such as
sensing and stimulating functions to detect and/ or treat
neurological conditions, would add convenience features within
a single device (see John; paragraphs 3-4 and 8), and an artisan
seeking to improve the art of brain stimulating lead retaining
ferrules such as Rodriguez would see the benefit in added
functionality inside the ferrule.
Ans. 2-3. Contrary to Appellants' suggestion that modifying Rodriguez
with John's electronics would render Rodriguez's device unsatisfactory for
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Application 13/126,283
its intended purpose of securing a lead (see Appeal Br. 9, 11 ), we discern no
error in the Examiner's finding that this would not be the case, because "the
addition of electronics and a power source to Rodriguez would still require a
lead to be physically secured to the ferrule." Ans. 4.
Appellants also query why the ordinarily skilled artisan, reading John,
would not have simply used John's system alone instead of modifying
Rodriguez's burr hole cap with John. See Reply Br. 5; see also Appeal Br.
10. As we understand the Examiner's analysis, the proposed combination of
Rodriguez and John would retain Rodriguez's lead retainer (see Rodriguez
,r,r 27-28, Fig. 2), as it is this structure in Rodriguez that, as quoted above,
allows for "a lead to be physically secured to the ferrule" (Ans. 4). It is the
lead retainer in Rodriguez that can "be rotated and pivoted within the burr
hole," thus permitting the lead to "be captured irrespective of the lead's
position within the burr hole" (Rodriguez ,r 28). John does not include such
a structure.
Accordingly, for these reasons and those of record, we discern no
reversible error in the Examiner's combination of Rodriguez and John as
rendering obvious claim 1. We affirm the rejection of claim 1. Appellants
group claims 4--6, 8, 13-15, and 17 with claim 1 (see Appeal Br. 6). These
fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2011). Appellants
address claims 10 and 11 as part of a separate group (see Appeal Br. 14--15),
but their argument on behalf of these claims is only by reference back to
their arguments regarding claim 1. Accordingly, we affirm the rejection of
claims 10 and 11 on substantially the same basis as of claim 1.
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B. Rejection 2
The Examiner articulates a different rationale for claim 2 than for
claims 3, 16, and 19-21 to support the addition of Adams to the combination
of Rodriguez and John already discussed above with regard to claim 1. See
Final Action 6-7.
As to claim 2, we agree with Appellants (see Appeal Br. 16) that
Rodriguez's lead retainer already provides the function for which the
Examiner relies on Adams in support of the rejection of claim 2, i.e., "to
ensure relative motion between the plate and ferrule is prevented" and to
"maintain[] a stable and precise position for the probe" (Final Action 6
( citation omitted)). 7 Thus, we also agree with Appellants that the Examiner
has not established a reason that the ordinarily skilled artisan would have
turned to Adams to further modify the combination of Rodriguez and John.
Accordingly, on this record, we reverse the rejection of claim 2.
As to claims 3, 16, and 19-21, Appellants address them as part of
separate groups (see Appeal Br. 18-20), but their arguments on behalf of
these claims are only by reference back to their arguments regarding claim 1.
Put differently, as to these claims, Appellants do not challenge the
Examiner's additional reliance on Adams or the rationale for combining
Adams with Rodriguez and John. Accordingly, Appellants have not
7 Appellants also point out that the combined Rodriguez/John ferrule would
be elongated (see John ,r 36) and thus would not require additional features
to prevent rotational motion of the probe. See Appeal Br. 17. This point is
well-taken on this record, as the Examiner does not respond directly to it in
the Answer (see generally Ans. 3--4).
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Application 13/126,283
demonstrated any reversible error by the Examiner in rejecting claims 3, 16,
or 19-21, and as such, we affirm the rejection of these claims.
C. Rejections 3 & 4
Appellants address claims 9 (Rejection 3) and 18 (Rejection 4) in
separate groups (see Appeal Br. 20-21 ), but their arguments on behalf of
these claims are only by reference back to their arguments regarding claim 1.
Accordingly, Appellants have not demonstrated any reversible error by the
Examiner in rejecting claims 9 or 18, and we affirm the rejections thereof.
CONCLUSION
Rejections 1, 3, and 4 are affirmed. Rejection 2 is affirmed as to
claims 3, 16, and 19-21, but reversed as to claim 2.
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-IN-PART
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