Ex Parte Eiger

Patent Trial and Appeal Board

Oct 26, 2017

13359739 (P.T.A.B. Oct. 26, 2017)

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.
13/359,739 01/27/2012 Jay H. EIGER QiG-48638/46901.209US01 2010
12243 7590 10/30/2017
Haynes and Boone, LLP (46901)
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
FLORY, CHRISTOPHER A
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY H. EIGER
Appeal 2016-006016
Application 13/359,7391
Technology Center 3700
Before DONALD E. ADAMS, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—15 and 27-45
(App. Br. 3). Examiner entered rejection under 35 U.S.C. §§ 102(b)/103,
and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies the real party in interest as “Greatbatch Ltd.” (App.
Br. 3.)
Appeal 2016-006016
Application 13/359,739
STATEMENT OF THE CASE
Appellant’s disclosure “relates generally to electrically powered
implantable medical devices and the dispersion of heat generated by
electrical componentry within the devices and/or magnetic fields used for
inductively recharging a power source of the implant” (Spec. 11).
Independent claims 1, 13, 15, 27, 31, and 42 are reproduced below:
1. An implantable medical device, comprising:
electrical circuitry including at least one heat generating
component;
a housing forming an inner chamber that receives the electrical
circuitry sealed within; and
a thermally conductive material that is specifically configured
to passively transfer heat from said heat generating component
of the electrical circuitry to a portion of the implantable medical
device that is not located in proximity to said heat generating
component, wherein the thermally conductive material is
provided in or on the housing and is a discrete component or
treatment separate from the electrical circuitry and the housing.
(App. Br. 33.)
13. An implantable medical device comprising:
electrical circuitry;
a housing forming an inner chamber that receives the electrical
circuitry sealed within; and
a sheet of highly ordered pyrolytic graphite disposed between
said electrical circuitry and said housing configured for
passively transferring heat generated by the electrical circuitry
to said housing.
{Id. at 35.)
15. An implantable medical device, comprising:
electrical circuitry including one or more heat generating
components, said circuitry adapted for providing a pulse
stimulation therapy;
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Application 13/359,739
a plurality of electrodes electrically connected to said electrical
circuitry and adapted to provide electrical pulses to a therapy
region of a patient;
a housing forming an inner chamber that receives said electrical
circuitry sealed therein; and
a sheet of highly ordered pyrolytic graphite disposed between
said electrical circuitry and said housing and sealed within said
housing that is configured to passively transfer heat from the
one or more heat generating components of the electrical
circuitry to a portion of the housing that is not located in
proximity to said one or more heat generating components.
{Id.)
27. An implantable medical device, comprising:
electrical circuitry including at least one heat generating
component;
a housing forming an inner chamber that receives the electrical
circuitry sealed within; and
a thermally conductive material that is specifically configured
to passively transfer heat from a location in proximity to said at
least one heat generating component of the electrical circuitry
to another location of the implantable medical device that is not
located in proximity to said heat generating component,
wherein the thermally conductive material is comprised of a
thermally conductive non-metallic material and is sealed within
said housing.
(Id. at 35-36.)
31. An implantable medical device, comprising:
electrical circuitry including at least one heat generating
component;
a housing forming an inner chamber that is adapted for
receiving a the electrical circuitry therein;
and
a thermally conductive material that is specifically configured
to passively transfer heat from a first portion of the implantable
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Application 13/359,739
medical device that is located in proximity to the at least one
heat generating component of the electrical circuitry, to a
second portion of the implantable medical device that is not
located in proximity to said heat generating component,
wherein the thermally conductive material is a discrete
component or treatment separate from the electrical circuitry
and the housing that is provided within the housing.
{Id. at 36.)
42. An implantable medical device, comprising:
electrical circuitry including at least one heat generating
component;
a housing forming an inner chamber that is adapted for
receiving said electrical circuitry sealed within; and
a thermally conductive material that is specifically configured
to passively transfer heat from a first portion of the implantable
medical device that is located in proximity to the at least one
heat generating component of the electrical circuitry, to the
housing for dissipation into an ambient surrounding of the
housing, wherein the thermally conductive material is a discrete
component or treatment separate from the electrical circuitry
and the housing and is provided within said housing.
{Id. at 38.)
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Application 13/359,739
The claims stand rejected as follows:2
Claims 1—3, 27, 28, 30-32, 42, 43, and 45 stand rejected under
35 U.S.C. § 102(b) as anticipated by Rogers.3
Claims 1—3, 27, 28, 30-32, 42, 43, and 45 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Rogers and
Richey.4
Claims 4—6, 13—15, 29, 33—35, and 44 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rogers, Richey, and
Mariner.5
Claims 7—9 and 36—38 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rogers and Schmeling ’032 with or
without Richey.
Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rogers, Schmeling ’032, and Mariner.
Claims 39-41 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rogers, Schmeling ’032, and Mariner with or
without Richey.
2 Examiner withdrew the rejections of: (a) claims 1—3, 7—9, 27, 28, 30—32,
36—38, 42, 43, and 45 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Schmeling et al. (US
2005/0075694 Al, published Apr. 7, 2005) (Schmeling ’694); (b) claims 4—
6, 13—15, 29, 33—35, and 44 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Schmeling ’694, Richey, and Mariner; and (c) claims 10—
12 and 39-41 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Schmeling ’694 and Mariner (see Ans. 2).
3 Rogers et al., US 8,267,983 B2, issued Sept. 18, 2012.
4 Richey, III, US 6,131,651, issued Oct. 17, 2000.
5 Mariner et al., US 7,901,509 B2, issued Mar. 8, 2011.
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Application 13/359,739
Anticipation'.
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Rogers teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Rogers “relates to medical instruments, and more particularly, to
medical instruments incorporating a thermoelectric transducer and
controller” (Rogers 1:30-32; see generally Final Act.6 2—3).
FF 2. Rogers discloses that the term “medical instrument” includes “an
implant” (Rogers 3:7—8; see also id. at 12:64—13:45 (exemplifying
implantable devices that fall within the scope of Rogers’ disclosure); see
Final Act. 2; Ans. 5).
FF 3. Rogers discloses that a thermoelectric (TE)
device may be used to provide cooling, heating, and/or
temperature control at a portion of a human body (or other
living tissue) to provide medical treatment in areas such as
neurological seizure control, pain management, transdermal
delivery of pharmaceutical agents, and/or caloric stimulation of
retrocortical cerebral enhancement. Such medical TE devices
may be implantable, insertable, hypodermic, attachable, and/or
wearable.
(Rogers 15:21—29; see also id. at 6:65 (defining the acronym “TE” as
“thermoelectric”); see Final Act. 2.)
6 Examiner’s February 26, 2015 Office Action.
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FF 4. Rogers’ Figure IB is reproduced below:
123b-§ f'
, 1
123c tOJE
( Tempsmture Controlled Medium j
i21b Figure IB ^ 103
Rogers’ FIG. IB illustrates a cross sectional view of a TE device according
to an embodiment of Rogers’ disclosure (Rogers 4:49—51; see generally
Final Act. 2).
FF 5. Rogers’ Figure 1C is reproduced below:
-103
vf Temperature Controlled Medium
TO I TE TO: Tic TE ie 20Tb
Heat Transfer Structure r:i
Figure 1C
133
105
Rogers’ FIG. 1C illustrates a cross sectional view of a TE device according
to an embodiment of Rogers’ disclosure (Rogers 4:49—51; see generally
Final Act. 2).
FF 6. Rogers’ TE
devices 101 a and 1016 ... are respectively illustrated by way
of example in FIGS. IB and 1C. As shown in FIG. IB, the TE
device 101 a may include a plurality of p-type TE elements P
and n-type TE elements N electrically coupled in series through
electrically conductive traces 121a-<2 and 123a-c (such as
copper traces). More particularly, the p-type and n-type TE
elements P and N may be altematingly coupled so that current
flows in a same first direction through all of the p-type TE
elements P and in a same second direction (opposite the first
direction) through all of the n-type TE elements N. Moreover,
the electrically conductive traces 121a and 121<2 may provide
electrical coupling to the controller 107. Accordingly, the p-
type and n-type TE elements may be electrically coupled in
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series between terminals of the controller 107, and thermally
coupled in parallel between the temperature controlled medium
103 and the heat transfer structure 105.
(Rogers 7:34—51.)
FF 7. Rogers’ Figure 1A is reproduced below:
Figure 1A
Rogers’ “FIG. 1A is a block diagram of a temperature controlled apparatus
according to some embodiments of [Rogers’ disclosure]” (Rogers 4:46-48;
Final Act. 2—3).
FF 8. Rogers’ Figure 8A is reproduced below:
Rogers’ “FIG. 8A is a plan view of a probe for a TE device according to
some embodiments of [Rogers’ disclosure]” (Rogers 5:8—9; see Final Act.
2).
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FF 9. Rogers’ Figure 8B is reproduced below:
Rogers’ “FIG. 8B is a longitudinal cross section of the probe of FIG. 8A
taken along section line B-B’ according to some embodiments of [Rogers’
disclosure]” (Rogers 5:10-12; see Final Act. 2).
FF 10. Rogers’
probe 801 may include a high thermal conductivity (high-k)
cold tip 803 (such as a metal tip) and an outer shell 805 having
an adiabatic zone 807. The adiabatic zone 807 may have a
double shell with internal channels containing a coolant.... A
TE device 809 may be provided . . . with a cold-side in contact
with the cold tip 803 and with a hot side in contact with a core
of the probe 801. The core of the probe may include an inner
core 811 and an outer core 813. The inner core 811 may
provide a high thermal conductivity, and more particularly, the
inner core 811 may include a phase change material with radial
fins. The outer core 813 may include a phase change material
and/or a high thermal conductivity material such as carbon
graphite, a heat pipe, and/or a continuous vapour-deposited
diamond (CVDD). The inner and/or outer cores 811 and/or 813
may be configured to disperse heat and/or to transport heat
away from the hot side of the TE device 809 to an external heat
sinking mechanism.
In addition, an insulating layer 815 may be provided
between the core (811 and/or 813) and an inner shell 817. The
insulating layer 815 may include electrical power and/or ground
connections between the TE device 809 and a controller, and
the inner shell 817 may include a low thermal conductivity
material with a low touch temperature and a low-q dissipation.
... [A] controller and power source may be provided within
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Application 13/359,739
and/or outside the probe 801, and the controller may be
configured to control operation of the TE device 809. . . .
(Rogers 16:20-49; see Final Act. 2—3; Ans. 7—8.)
FF 11. Rogers discloses that “[a] thermal mass including materials of high-
thermal-diffusivity and/or high-thermal-capacitance (i.e., phase change
materials or PCM’s) may be attached to a hot-side of the TE device to
absorb and/or diffuse heat relatively uniformly throughout the mass”
(Rogers 15:58—62; see generally Final Act. 2—3).
FF 12. Rogers’ “probe 801 may be used as a medical implant” (Rogers
16:19; see Final Act. 2).
ANAFYSIS
Rogers teaches an implantable medical device, specifically probe 801
(FF 8—10 and 12; cf App. Br. 33 (Appellant’s claim 1); App. Br. 35—36
(Appellant’s claim 27); App. Br. 36 (Appellant’s claim 31); App. Br. 38
(Appellant’s claim 42)). Rogers’ implantable medical device comprises a
housing, specifically an outer shell 805, and electrical circuitry including at
least one heat generating component, specifically a TE device 101, 809 (FF
^11).
Rogers’ TE device 101, 809 comprises P and N elements coupled in
series through electrically conductive copper traces 121 a-d and 123a-c (FF
4—7). In addition, Rogers’ TE device 101, 809 comprises a cold side and a
hot side, wherein the hot side is in contact with a core of probe 801 (FF 7—
11). As Examiner explains, Rogers’ “TE device 809 reads on the electrical
circuitry including at least one heat generating component. . .” (Ans. 7).
The core of Rogers’ probe 801 “may include an inner core 811 and an
outer core 813” (FF 10). Rogers’ “inner core 811 may provide a high
thermal conductivity, and . . . may include a phase change material with
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radial fms” (id.). Rogers’ “outer core 813 may include a phase change
material and/or a high thermal conductivity material such as carbon graphite,
a heat pipe, and/or a continuous vapour-deposited diamond (CVDD)” (id).
“The inner and/or outer cores 811 and/or 813 [of Rogers’ implantable
medical device] may be configured to disperse heat. . (id). In addition,
Rogers teaches that “[a] thermal mass including materials of high-thermal-
diffusivity and/or high-thermal-capacitance (i.e., phase change materials or
PCM’s) may be attached to a hot-side of the TE device to absorb and/or
diffuse heat relatively uniformly throughout the mass” (FF 11; see also FF 7
(“Heat Transfer Structure” 105); Ans. 7—8).
Rogers’ housing 805 forms an inner chamber that (i) receives the
electrical circuitry (TE device 101, 809) sealed within or (ii) is adapted for
receiving the electrical circuitry (TE device 101, 809) (a) therein or (b)
sealed within (FF 6—11; cf. App. Br. 33 (Appellant’s claim 1); App. Br. 35—
36 (Appellant’s claim 27); App. Br. 36 (Appellant’s claim 31); and App. Br.
38 (Appellant’s claim 42)). Absent evidence to the contrary, we find that the
interior of Rogers’ implantable medical device, probe 801, is necessarily
sealed to prevent bodily material from entering the interior of the probe 801
(see Final Act. 11 (Rogers discloses an implantable medical device, probe
801, thus, “the materials were necessarily selected to be safely implanted,
and the device would necessarily be hermetically sealed”)).
Claims 1 and 31:
Appellant’s claims 1 and 31 are reproduced above.
Rogers’ implantable medical device, probe 801, comprises a thermally
conductive material that is specifically configured to passively transfer heat
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Application 13/359,739
from: (i) a heat generating component of the electrical circuitry, TE device
101, 809, to a portion of the implantable medical device, probe 801, that is
not located in proximity to the heat generating component, TE device 101,
809 (cf. App. Br. 33 (Appellant’s claim 1)) and/or (ii) a first portion of the
implantable medical device, probe 801, that is located in proximity to the at
least one heat generating component of the electrical circuitry, TE device
101, 809, to a second portion of the implantable medical device, probe 801,
that is not located in proximity to the heat generating component, TE device
101, 809, (cf. App. Br. 36 (Appellant’s claim 31)). See FF 7—11.
Although Rogers may refer to the entire probe 801 that comprises TE
device 101, 809 as a TE device; Rogers specifically identifies element 101,
809, of probe 801, as the TE device (FF 7—10). Therefore, we are not
persuaded by Appellant’s contention that “the TE device is the probe device
in Rogers that is disclosed as being responsible for transferring heat to and
from the temperature controlled medium 103” (Reply Br. 9).
As is illustrated in Rogers’ Figure 8B, the thermally conductive
materials associated with inner core 811 and outer core 813 of Roger’s probe
801 extend from the hot side of heat generating electrical device, TE device
101, 809, to the opposite end of Rogers’ implantable medical device, probe
801 (see FF 9—11). We find that this opposite end of Roger’s probe is not in
“proximity” to the heat generating component, i.e., TE device 101, 809.
Thus, heat is implicitly passively transferred from heat generating electrical
device, TE device 101, 809, to a location that is not located in proximity to
the heat generating component as required by claim the claims. Therefore,
we are not persuaded by Appellant’s contention that Rogers “heat transfer
structure 105 appears to be a heat sink which is never disclosed as being
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used to transfer any heat to any ‘portion of the implantable medical device
that is not located in proximity to said heat generating component’ as no
such heat transfer is discussed in Rogers” (Reply Br. 8; cf. FF 10-11; see
Reply Br. 5 (“The very use of the term ‘thermally conductive material’ . . .
implies that the material transfers heat using conduction, a passive method
of heat transfer . .
Rogers’ thermally conductive material is provided in or on the
housing of the implantable medical device, probe 801 (FF 7—11; cf. App. Br.
33 (Appellant’s claim 1); App. Br. 36 (Appellant’s claim 31)). In addition,
Rogers’ thermally conductive material is a discrete component separate from
the implantable medical device’s, probe 801, electrical circuitry, TE device
101, 809, and housing 805 (FF 7—11; Ans. 8 (Rogers’ “cores 811 and 813
are in or on the housing of the [] probe and are discrete from the TE device
809 . . . .”); cf. App. Br. 33 (Appellant’s claim 1); App. Br. 36 (Appellant’s
claim 31)).
Therefore, we find no error in Examiner’s finding that Rogers
anticipates Appellant’s claims 1 and 31 (Final Act. 2—3).
Notwithstanding Appellant’s contention to the contrary, Rogers
teaches that TE device 101, 809 and controller 107 may reside within
housing 805 of probe 801 (FF 7—10; cf. App. Br. 10 (“there is no teaching in
Rogers that the outer shell 805 has any inner chamber for housing the
electronics of FIG. 1A . . .”).
Notwithstanding Appellant’s contention to the contrary, Rogers
teaches that “[a] thermal mass including materials of high-thermal-
diffusivity and/or high-thermal-capacitance . . . may be attached to a hot-side
of [Rogers’] TE device to absorb and/or diffuse heat relatively uniformly
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throughout the mass” (FF 11; see also FF 8—10; cf. App. Br. 11 (“the
teaching of Rogers strongly suggests that the temperature controlled medium
103 has external contact with body tissue, which is the intended target to be
cooled”)). Rogers teaches that TE device 101, 809 produces heat (FF 7—11).
Therefore, we are not persuaded by Appellant’s unsupported contention that
“[m]any types of electronic circuits generate little or no heat, such as
capacitors, inductors, and copper wiring, for example” and “in many
situations the generation of heat is minor and no specific design
considerations are provided to remove such minor heat” (Reply Br. 4).
We are not persuaded by Appellant’s contention that “[tjhere is
nothing that supports the interpretation that the components that are found
within the outer shell 805 are to be cooled by [the device’s electrical
circuitry, i.e.] TE device 809 . . .,” which fails to account for the thermally
conductive material contained within Rogers’ implantable medical device or
probe 801 that disperses heat away from the hot side of Rogers’ electrical
circuitry, i.e. TE device 101, 809 (see App. Br. 11; Reply Br. 7; cf. FF 7—
11). Rogers’ TE device 101, 809 comprises a hot side and is, thus, a heat
generating component that is enclosed by the outer shell 805, which is
cooled by thermally conductive materials contained within Rogers’
implantable medical device or probe 801 (see FF 7—12; cf. App. Br. 11
(Rogers “fails to teach any heat generating component that is enclosed by
the outer shell 805 that is cooled by the TE device 809 or any other device,
as required by [Appellant’s] claim [1]”)). Therefore, we are not persuaded
by Appellant’s contention that the intended target of Rogers’ probe 801 is
body tissue, which dismisses the electric circuitry and thermally conductive
material contained within Rogers’ implantable medical device or probe (see
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generally App. Br. 11 (“the temperature controlled medium that is to be
cooled, such as living tissue, is actually found outside of the outer shell
805”); see id. at 12; Reply Br. 6; cf. FF 1—12).
Appellant fails to identify a limitation in Appellant’s claims or
Specification that requires the electrical circuitry, i.e., TE device 101, 809 to
represent something other than “an active heat pump that is participating in
the cooling function to cool [] items ...” that are external to probe 801 (see
App. Br. 11—12; id. at 13 (“A ‘thermoelectric device’ is, by definition, a
device that cools by using active cooling (i.e., turn off the power, and the
cooling action stops”); Reply Br. 4—5 (“the use of thermoelectric
components (such as in Rogers) are active cooling devices that require
electrical energy to operate”); cf. App. Br. 33 (Appellant’s claim 1); App.
Br. 35—36 (Appellant’s claim 27); App. Br. 36 (Appellant’s claim 31); App.
Br. 38 (Appellant’s claim 42)). Therefore, we are not persuaded by
Appellant’s contention that Examiner and Rogers’
reference to the “hot side” of the TE device 809 ... is not
evidence that the TE device 809 has a heat generating
component. . . because Rogers makes clear that the heat which
creates the “hot side” of the TE device was actually generated
and obtained from the externally located temperature controlled
medium 103 by action of active heat transfer ....
(Reply Br. 9—10.)
For the same reason, we are not persuaded by Appellant’s contention
that Rogers’
TE device 101 is an active heat pump that is participating in the
cooling function to cool external items . . . and transfer
structure 105 may be a heat sink or other heat transfer structure
that is also participating in the active cooling process but [] is
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not a component to be cooled and is not disclosed as being used
to cool any electronic components within the device.
(App. Br. 11—12; see also id. at 13 (“it is the temperature controlled medium
that Rogers teaches is the medium actually being cooled by the cooling
function of the Rogers device[, e.g. probe 801]”); Reply Br. 4 (“Claim 1
requires that heat specifically generated by electronic circuitry be transferred
from the electronic circuitry to another location, which must be shown by
the Examiner to be present in the cited prior art”); Reply Br. 8 (Rogers’ heat
transfer structure 105 “as a whole clearly uses active heat transfer to transfer
heat from the heat generating component 103 by nature of the TE device in
conjunction with the structure 105”).)
As discussed above, the intended target of probe 801 itself is not the
same as the function of each discrete internal component of Rogers’ probe
801. Thus, as discussed above, although the ultimate utility of Rogers’
probe 801 may be to cool items external to the entire probe 801 itself; the
individual, discrete, elements contained within Rogers’ probe 801 perform
different functions to accommodate probe 801’s ultimate function. For
example, Roger’s probe 801 comprises elements that passively transfer heat
away from the hot side of Rogers’ electrical circuitry, i.e. TE device 101,
809, which is consistent with Appellant’s claimed invention (see FF 7—11;
Ans. 7 (“Each example provided [in Rogers] for heat transfer structure 105
is a passive heat transfer structure, and therefore directly meets the claim
independently of any function or involvement of [TE] element 101 .. . .”);
cf. App. Br. 33 (Appellant’s claim 1); App. Br. 35—36 (Appellant’s claim
27); App. Br. 36 (Appellant’s claim 31); App. Br. 38 (Appellant’s claim
42)). For the foregoing reasons, we are not persuaded by Appellant’s
contention that “[n]owhere does Rogers teach that [components inside
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Rogers’ probe 801] fiinction[] to cool any heat generating components
within the probe” (App. Br. 13; see generally id. at 13—15; Reply Br. 8; cf.
FF7-11).
Having found no deficiency in Examiner’s finding that Appellant’s
claim 1 is anticipated by Rogers, we are not persuaded by Appellant’s
contention that “claim 31 is patentable over [Rogers] for at least similar
reasons as discussed [by Appellant] regarding claim 1 . . (App. Br. 19).
Claims 3 and 32:
The implantable medical device of Appellant’s claims 3 and 32
depend from and further limit the thermally conductive material of the
implantable medical device of Appellant’s claims 1 and 31, respectively, to
at least one of: located within the inner chamber of the housing between the
housing and the heat generating component of the electrical circuitry,
located within a wall of the housing as an integrated housing component, or
located on the exterior of the housing as a coating between the housing and a
tissue that surrounds the implantable medical device (App. Br. 33; id. at 36—
37).
Rogers teaches that the thermally conductive material of Rogers’
implantable medical device, probe 801, is at least located within the inner
chamber of the housing 805 between the housing 805 and the heat
generating component of the electrical circuitry, TE device 101, 809,
wherein “thermal mass including materials of high-thermal-diffusivity
and/or high-thermal-capacitance . . . may be attached to a hot-side of the TE
device to absorb and/or diffuse heat relatively uniformly throughout the
mass” and inner core 811, outer core 813, and inner shell 817 include
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thermal conductivity material and are located between the heat generating
component of the electrical circuitry, TE device 101, 809 and housing 805
(FF 7—12; cf. App. Br. 33 (Appellant’s claim 3)). Therefore, we are not
persuaded by Appellant’s contention that Rogers, as relied upon by
Examiner, fails to teach a device that comprises a thermally conductive
“material. . . [in] the housing . . . between the [device’s] housing and the
heat generating [electrical] components” of the device (App. Br. 17).
Having found no deficiency in Examiner’s finding that Appellant’s
claim 1 is anticipated by Rogers, we are not persuaded by Appellant’s
contention that “claim ... 3 [is] patentable over [Rogers] for the reasons
discussed [with respect to Appellant’s] claim 1” (App. Br. 17).
Having found no deficiency in Examiner’s finding that Appellant’s
claim 31 is anticipated by Rogers, we are not persuaded by Appellant’s
contention that “claim 32 is [] patentable over [Rogers] for the reasons
discussed [with respect to Appellant’s] claim 31” (App. Br. 19).
Claim 27 \
Appellant’s claim 27 is reproduced above.
Rogers’ implantable medical device, probe 801 comprises a thermally
conductive material that is specifically configured to passively transfer heat
from a location in proximity to the at least one heat generating component of
the electrical circuitry, TE element 101, 809, to another location of the
implantable medical device, probe 101, that is not located in proximity to the
heat generating component, TE element 101, 809, (cf. App. Br. 35—36
(Appellant’s claim 27)). See FF 7—12.
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Absent evidence to the contrary, we find that the interior of Rogers’
implantable medical device, probe 801, is necessarily sealed to prevent
bodily material from entering the interior of the probe 801 (see Final Act. 11
(Rogers discloses an implantable medical device, probe 801, thus, “the
materials were necessarily selected to be safely implanted, and the device
would necessarily be hermetically sealed”)). Rogers teaches a thermally
conductive material comprised of a thermally conductive non-metallic
material contained within probe 801 (FF 10; cf. App. Br. 35—36 (Appellant’s
claim 27; Spec. 141 (Appellant’s “thermally conductive material may []
include carbon compounds and/or other elements or compounds that are
non-metallic” (Spec. 141). Thus, Rogers teaches that the thermally
conductive material is sealed within the housing of the implantable medical
device and may be “carbon graphite, a heat pipe and/or a continuous vapour-
deposited diamond (CVDD)” (FF 8—10; cf App. Br. 35—36 (Appellant’s
claim 27)). Therefore, we are not persuaded by Appellant’s contention that
“Rogers is silent as to sealing any thermally conductive material within the
housing” (App. Br. 18).
Having found no deficiency in Examiner’s finding that Appellant’s
claim 1 is anticipated by Rogers, we are not persuaded by Appellant’s
contention that “claim 27 is patentable over [Rogers] at least for reasons
similar to the reasons discussed [by Appellant] regarding claim 1 . . .” (id. ).
Claim 42\
Appellant’s claim 42 is reproduced above.
Rogers teaches an implantable medical device, probe 801, comprising
a housing 805 and heat generating electrical circuitry, TE device 101, 809,
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wherein “thermal mass including materials of high-thermal-diffusivity
and/or high-thermal-capacitance . . . may be attached to a hot-side of the TE
device to absorb and/or diffuse heat relatively uniformly throughout the
mass” and inner core 811, outer core 813, and inner shell 817 include
thermal conductivity material and are located between the heat generating
component of the electrical circuitry, TE device 101, 809 and housing 805
(FF 7—12). Rogers teaches the “outer shell 805 ha[s] an adiabatic zone 807.
The adiabatic zone 807 may have a double shell with internal channels
containing a coolant. . .,” which is, absent evidence to the contrary, “an
ambient surrounding of the housing” as is required by Appellant’s claim 42
(FF 10; cf. App. Br. 38 (Appellant’s claim 42)). Thus, Rogers’ thermally
conductive material is provided in housing 805 of the implantable medical
device, probe 801, and the thermal material is a discrete component or
treatment separate from the implantable medical device’s electrical circuitry,
TE device 101, 809 and housing 805 (FF 7—12; cf. App. Br. 38 (Appellant’s
claim 42)). Therefore, Rogers teaches a device that passively transfers heat
from a first portion of the implantable medical device to the housing such
that the heat is dissipated into an ambient surrounding of the housing, i.e.,
the adiabatic zone 807 of Rogers’ device.
Therefore, we find no error in Examiner’s finding that Rogers
anticipates Appellant’s claim 42 and are not persuaded by Appellant’s
contention that Rogers fails to teach the transfer of heat “to the housing for
‘dissipation into an ambient surrounding of the housing’ . . . [because]
Rogers is not clear about where the heat is ultimately transferred to” (see
Final Act. 2—3; cf. App. Br. 20).
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Having found no deficiency in Examiner’s finding that Appellant’s
claim 1 is anticipated by Rogers, we are not persuaded by Appellant’s
contention that “claim 42 is patentable over [Rogers] for at least reasons
similar to those discussed [by Appellant] regarding claim 1” (App. Br. 20).
Claims 28 and 43:
The implantable medical device of Appellant’s claims 28 and 43
depend from and further limit the thermally conductive material of the
implantable medical device of Appellant’s claims 27 and 42, respectively, to
a coating provided on an interior of the housing (App. Br. 36; id. at 38).
Examiner finds that Rogers’ “thermally conductive material. . . may
be a surface, i.e. coating (e.g. column 3, lines 4-9; column 7, lines 9-11;
column 7, lines 22-24; column 13, lines 59-67)” (Final Act. 5; see also id. at
4 (citing Rogers 16:20-39)). Rogers, as relied upon by Examiner, at best,
teaches that “[t]he temperature controlled medium [] may be any substrate,
surface, device, instrument, etc. for which temperature control is desired”
(see Rogers 7:9—11). Rogers’ temperature controlled medium, however, is
distinct from Rogers’ thermally conductive material. Thus, Examiner failed
to establish an evidentiary basis on this record to support a finding that
Rogers’ thermally conductive material is a coating provided on an interior of
the housing, 805, of an implantable medical device, probe 801, as required
by Appellant’s claims 28 and 43 (see App. Br. 18—19 (“Examiner fails to
address this particular coating feature in the rejections . . ., but in any case
[Rogers] fail[s] to teach the use of a thermally conductive material that is a
coating . . .”); see id. at 20, 36, and 38—39).
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CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Rogers teaches Appellant’s claimed invention with respect to
claims 1, 3, 27, 31, 32, and 42. The rejection of claims 1, 3, 27, 31, 32, and
42 under 35 U.S.C. § 102(b) as being anticipated by Rogers is affirmed.
Claim 2 is not separately argued and falls with claim 1. Claim 30 is not
separately argued and falls with claim 27. Claim 45 is not separately argued
and falls with claim 42.
The preponderance of evidence on this record fails to support
Examiner’s finding that Rogers teaches Appellant’s claimed invention with
regard to claims 28 and 43. The rejection of claims 28 and 43 under
35 U.S.C. § 102(b) as being anticipated by Rogers is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 13. Examiner relies on Richey to
teach[] that it is known to use a thin sheet comprising any of
highly ordered pyrolytic graphite (HOPG), thermal pyrolytic
graphite (TPG) or compression annealed pyrolytic graphite
(CAPG)—all passive heat transfer materials—with a thickness
between two microns and 2mm to provide a flexible and
conformable heat transfer device that can rapidly transfer heat
from a source to a sink located a substantial distance apart from
each other....
(Final Act. 4 (citing Richey, Abstract).)
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FF 14. Examiner relies on Mariner to disclose that TPG, CAPG, and HOPG
“have an in plane conductivity greater than 1000 W/m-K and an out of plane
conductivity less than 10 W/m-K . . (id. at 9; see also Ans. 11 (Mariner
“sets forth certain inherent properties related to the materials [contained
within the device suggested by the combination of] . . . Rogers and
Richey”)).
FF 15. Examiner finds that “Rogers[] discloses [] therapeutic electrical
circuitry for providing electrical signals to a therapeutic lead . . . and a
temperature sensor for determining a surface temperature of the housing”
(Final Act. 10 (citing Rogers 2:41—57, 7:20-33, and 13:10-37)).
FF 16. Examiner finds that Rogers “does not expressly disclose a recharging
circuitry for recharging a power source including an implant coil for
receiving an inductive power signal from an external charger” and relies on
Schmeling’s disclosure of the
use [of] an external charger coupled with an implanted coil to
inductively power an implantable therapeutic device by
wirelessly charging a rechargeable battery in the implanted
system through the skin in order to remove the need for a wired
connection through the skin, reduce the size of the battery[,]
overall [implantable medical device] size, and to extend the
lifetime of the [implantable medical device] beyond that of the
battery alone
to make up for the foregoing deficiency in Rogers (id. at 10 (citing
Schmeling 1:32—59)).
FF 17. Examiner finds that Schmeling discloses a housing made of a
titanium alloy (Final Act. 12 (citing Schmeling 17:1—13)).
FF 18. Examiner finds that Rogers “does not expressly disclose that the
thermally conductive material comprises a thermally conductive pyrolytic
graphite sheet, where in the sheet is partially segmented to reduce eddy
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currents” and relies on Mariner’s disclosure of the use of “TPG sheets which
can be applied in small pieces, random sizes or strips as a thermally
conductive layer which can regulate and control the temperature of the
substrate to which it is applied with improved efficiency due to its extremely
improved thermal conductivity over other materials” (id. at 12 (citing
Mariner, Abstract and 4:56—65)).
ANALYSIS
The combination of Rogers and Richey.
Based on the combination of Rogers and Richey, Examiner concludes
that, at the time Appellant’s invention was made, it would have been prima
facie obvious to modify Rogers’ implantable medical device, probe 801, to
include Richey’s passive heat transfer materials, because
such a modification would provide the predictable results of
providing a flexible and conformable heat transfer device for
rapid passive heat conduction over a long distance to satisfy the
disclosed purpose of the TE-device/Heat Transfer structure of
Rogers[] to quickly move heat from [the hot side of TE device
101, 809] . . . to other locations.
(Id. at 4.).
Claims 1 and 31:
Appellant’s claims 1 and 31 are reproduced above.
“[AJnticipation is the epitome of obviousness.” Connell v. Sears,
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Therefore, having
found claims 1 and 31 anticipated by Rogers, we also find claims 1 and 31
prima facie obvious over Rogers.
We are not persuaded by Appellant’s contention that Richey’s
disclosure of thermally conductive materials
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is not reasonably pertinent to the problem with which Rogers is
concerned because a person having ordinary skill in the art of []
providing a cool external surface via active cooling for medical
applications would not reasonably have expected to solve that
problem by considering a reference solely dealing with a
passive heat transfer device without any suggested medical
applications,
which fails to account for the thermally conductive materials within Rogers’
implantable medical device, probe 801 (App. Br. 15—16; cf. FF 7—13). On
this record, Examiner relies on Richey to disclose thermally conductive
materials that a person of ordinary skill in this art would have considered in
manufacturing an implantable medical device, e.g., Rogers’ probe 801,
which comprises thermally conductive materials (see FF 7—13). Thus,
notwithstanding Appellant’s contention to the contrary, Richey is reasonably
pertinent to the particular problem, i.e., thermally conductive materials that
dissipate heat, which both Appellant and Rogers were involved. Therefore,
notwithstanding Appellant’s contention to the contrary, Richey is analogous
to both Appellant’s claimed invention and Rogers {cf. App. Br. 15—16). See
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992).
For the same reason, we are not persuaded by Appellant’s contention
that the combination of Rogers and Richey is based in hindsight (see App.
Br. 15; cf. Ans. 8—9).
For the reasons set forth above, with respect to the anticipation
rejection, we are not persuaded by Appellant’s contention that “the
combination of Rogers with Richey is [] not proper because Richey discloses
an entirely passive heat transfer mechanism, whereas Rogers requires that
the heat transfer function be electronically controllable (hence active),”
which fails to account for the individual components, e.g., thermally
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conductive materials within Rogers’ probe 801 (App. Br. 16). Therefore, we
are not persuaded by Appellant’s contention that Richey would change
Rogers’ “principle of operation” and “render Rogers unsatisfactory for its
intended purpose” {id. at 16; see generally id. at 16—17; Reply Br. 11—12
(“Richey discloses a different means of heat transfer, one that does not
provide a cold surface for cooling external components. Hence, using the
heat transfer methodology of Richey with the Rogers device would clearly
change the principle of operation of Rogers . . .”); cf. Ans. 9 (“Rogers
already discloses passive heat transfer means and therefore does not require
or necessitate only active heat transfer to properly function”)).
Claims 3 and 32:
The requirements of Appellant’s claims 3 and 32 are discussed above.
“[AJnticipation is the epitome of obviousness.” Connell, 722 F.2d at
1548. Therefore, having found claims 3 and 32 anticipated by Rogers, we
also find claims 3 and 32 prima facie obvious over Rogers.
Further, having found no deficiency in Rogers, with respect to claims
3 and 32, we are not persuaded by Appellant’s contention that “Richey fails
to overcome [the] shortcomings” of Rogers (App. Br. 17; see generally id. at
19).
Claim 27:
Appellant’s claim 27 is reproduced above.
“[AJnticipation is the epitome of obviousness.” Connell, 722 F.2d at
1548. Therefore, having found claim 27 anticipated by Rogers, we also find
claim 27 prima facie obvious over Rogers {cf. App. Br. 18).
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Claim 42\
Appellant’s claim 42 is reproduced above.
“[AJnticipation is the epitome of obviousness.” Connell, 722 F.2d at
1548. Therefore, having found claim 42 anticipated by Rogers, we also find
claim 42 prima facie obvious over Rogers (cf. App. Br. 20).
Claims 28 and 43:
The requirements of Appellant’s claims 28 and 43 are discussed
above.
Examiner failed to establish that Richey makes up for the deficiency
in Rogers, discussed in the anticipation rejection of claims 28 and 43.
Therefore, we agree with Appellant’s contention that Examiner failed to
establish an evidentiary basis on this record to support a conclusion that the
combination of Rogers and Richey suggests a device comprising a thermally
conductive material that is a coating as is required by Appellant’s claims 28
and 43 (see id. at 18—19).
The combination of Rogers, Richey, and Mariner.
Based on the combination of Rogers, Richey, and Mariner, Examiner
concludes that, at the time Appellant’s invention was made, it would have
been prima facie obvious to modify Rogers’ implantable medical device,
probe 801, to include Richey’s passive heat transfer materials, because
such a modification would provide the predictable results of
providing a flexible and conformable heat transfer device for
rapid heat conduction over a long distance to satisfy the
disclosed purpose of the TE-device/Heat Transfer structure of
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Rogers[] to quickly move heat from the [hot side of Rogers’ TE
device 101, 809] . . . to other locations.
(Final Act. 9.)
As Examiner explains, Mariner is relied upon to provide the physical
properties of the materials disclosed by Richey (see Ans. 11; see also FF
14). In addition, we find that a person of ordinary skill in this art would
have found it prima facie obvious, to combine and/or substitute Rogers’
thermally conductive materials with those disclosed by Richey (see FF 7—
13). Therefore, we are not persuaded by Appellant’s contention that
“Mariner is not a relevant reference” for use in combination with Rogers and
Richey (App. Br. 27).
Claims 4, 13, and 29:
Appellant’s claim 4 depends ultimately from and further limits
Appellant’s claim 1 to require that the thermally conductive material is
located within the inner chamber of the housing, disposed between the
housing and the electrical circuitry, and is comprised of a thermally
conductive material sheet that is form fitted to, at least, a portion of the inner
chamber (see id. at 33).
Appellant’s claim 13 is reproduced above and requires the claimed
implantable medical device to comprise, inter alia, a sheet of highly ordered
pyrolytic graphite disposed between the electrical circuitry and the housing
configured for passively transferring heat generated by the electrical
circuitry to the housing (see id. at 35).
Appellant’s claim 29 depends from and further limits Appellant’s
claim 27 to require that the thermally conductive material is a sheet of
material provided within the inner chamber of the housing (see id. at 36).
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As discussed above, Rogers anticipates Appellant’s claims 1 and 27
and discloses a thermally conductive material located within the inner
chamber of the housing 805 of Rogers’ implantable medical device, probe
801, between housing 805 and the heat generating electrical circuitry, TE
device 101, 809 (FF 1—12). Richey discloses a conformable thermally
conductive material sheet, such as highly ordered pyrolytic graphite (HOPG)
(FF 13). Thus, we find no error in Examiner’s conclusion that, at the time of
Appellant’s claimed invention, it would have been prima facie obvious to a
person of ordinary skill in this art to form fit Richey’s conformable
thermally conductive material sheet, such as HOPG, between the housing
805 and the heat generating electrical circuitry, TE device 809 of Rogers’
implantable medical device, probe 801 (see Final Act. 9; FF 1—13).
Therefore, we are not persuaded by Appellant’s contention that the
combination of Rogers, Richey, and Mariner fails to suggest the subject
matter of Appellant’s claims 4 and 29 (see App. Br. 28).
To be complete, although Appellant’s contention that replacing
Rogers’ TE device 101, 809 with Richey’s HOPG “could destroy the
intended functionality of [Rogers’] TE device 101” was presented in
Appellant’s Reply Brief and is, therefore, not timely filed,7 on this record we
consider Appellant’s contention only to make clear that the combination of
Rogers and Richey, as relied upon by Examiner, makes obvious the use of
Richey’s HOPG as the thermally conductive material, e.g., inner core 811
7 See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(Appellant fails to “explain what ‘good cause’ there might be to consider the
new argument. On this record, Appellant’s new argument is belated”).
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and outer core 813 of Rogers’ device, not Rogers’ heat generating electrical
component, TE device 101, 809 (see Reply Br. 12).
Claim 5:
Appellant’s claim 5 depends from and further limits Appellant’s claim
4 to require that the thermally conductive material sheet has an in plane
thermal conductivity greater than 1000 W/m-K, and out of plane thermal
conductivity less than 10 W/m-K, and a thickness between 1 micron and 2
mm (App. Br. 33).
Richey discloses a conformable thermally conductive material sheet
made of HOPG, TPG, and CAPG having a thickness between 2 microns and
2 mm (FF 13). Examiner finds that Mariner discloses that TPG, CAPG, and
HOPG “have an in plane conductivity greater than 1000 W/m-K and an out
of plane conductivity less than 10 W/m-K . . .” (FF 14). Therefore, we are
not persuaded by Appellant’s contention that the “specific dimensions and
other features [of Appellant’s claim 5 are] not found in any of the prior art. .
.,” which fails to particularly point out the alleged deficiencies in Examiner’s
combination of Rogers, Richey, and Mariner (see App. Br. 28).
The combination of Rogers and Schmeling ’032 with or without Richey.
Based on the combination of Rogers and Schmeling with or without
Richey, Examiner concludes that, at the time Appellant’s invention was
made, it would have been prima facie obvious to modify Rogers’ system to
include Schmeling’s “inductive recharging circuitry and coil. . ., [because]
such a modification would provide the predictable results of reducing device
size and extending battery life” (Final Act. 11).
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Having found no deficiency in Examiner’s rejection of Appellant’s
claim 1 over Rogers alone or in combination with Richey, we are not
persuaded by Appellant’s contention that “[cjlaims 7-9 depend on claim 1,
and hence are patentable over Rogers [alone or in combination with] Richey
for reasons similar to the reasons discussed . . . [above] regarding claim 1”
(App. Br. 29).
Having found no deficiency in Examiner’s rejection of Appellant’s
claim 31 over Rogers alone or in combination with Richey, we are not
persuaded by Appellant’s contention that “[c]laims 36-38 depend on claim
31, and hence are patentable over [Rogers alone or in combination with
Richey] for reasons similar to those discussed . . . above regarding claim 31”
{id.).
Claim 7:
Appellant’s claim 7, depends from and further limits the electrical
circuitry of the implantable medical device of Appellant’s claim 1 to further
comprise: (1) a therapeutic electrical circuitry configured for providing
electrical signals to a therapeutic electrical lead external to the housing; (2) a
temperature sensor configured for determining a surface temperature of the
housing; and (3) a recharging circuitry configured for recharging a power
source that provides power to the therapeutic electrical circuitry, wherein the
recharging circuitry includes an implant coil that is implanted in a patient for
receiving an inductive power signal from an external charger (App. Br. 34).
Appellant contends that “claim[] 7 . . . recite[s] that the electrical
circuitry comprises specific therapeutic circuitry not found in Rogers,
Schmeling, or Richey, and hence claim[] 7 . . . [is] patentable over the
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references for this reason . . (Final Act. 30). We are not persuaded (see FF
15-16).
Claim 9:
Appellant’s claim 9 ultimately depends from and further limits the
implantable medical device of Appellant’s claim 1 to require that the
material of the housing and the thermally conductive material is further
selected to be safely implanted in a human body, and wherein the material of
the housing is configured to include the inner chamber that is hermetically
sealed (App. Br. 34).
As Examiner explains, Rogers discloses an implantable medical
device, probe 801, thus, “the materials were necessarily selected to be safely
implanted, and the device would necessarily be hermetically sealed” (Final
Act. 11; see id. (Examiner concludes that it would have been prima facie
obvious to hermetically seal the housing because Schmeling discloses a
hermetically sealed housing); Schmeling 9:33—35). Therefore, we are not
persuaded by Appellant’s contention that the features of Appellant’s claim 9
are not suggested by the combination of Rogers and Schmeling, with or
without Richey (see App. Br. 30).
The combination of Rogers, Schmeling ’032, and Mariner with or without
Richey.
Based on the combination of Rogers, Schmeling, and Mariner, with or
without Richey, Examiner concludes that, at the time Appellant’s invention
was made, it would have been prima facie obvious to make the housing of
Rogers’ implantable medical device, probe 801, out of a titanium alloy as
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suggested by Schmeling and use small pieces, random sizes or strips of
Mariner’s TPG sheets as the thermally conductive layer in Rogers’ device to
“improve[] thermal conductivity and temperature regulation of [Rogers’]
device” (Final Act. 12). In this regard, Examiner finds that Mariner’s “TPG
sheet is considered to be partially segmented and would thus be capable of
reducing eddy currents from an external inductive power signal” {id.).
Examiner further reasons that the selection of a particular grade of titanium,
e.g., grade 9 or grade 23, “would have been an obvious matter of design
choice to a person of ordinary skill in the art. . ., because [Appellant] has
not disclosed that use of either provides an advantage, is used for a particular
purpose, or solves a stated problem” {id. at 13).
Claims 10 and 12:
Having found no deficiency in Examiner’s rejection of Appellant’s
claim 1 over Rogers alone or in combination with Richey, we are not
persuaded by Appellant’s contention that “[c]laims 10-12 depend on claim 1,
and hence are patentable over Rogers [alone or in combination with Richey]
for the reasons discussed regarding claim 1 . . .” (App. Br. 30).
Claim 10:
Appellant’s claim 10 ultimately depends from and further limits the
implantable medical device of Appellant’s claim 1 to require that the
thermally conductive material comprises a thermally conductive pyrolytic
graphite sheet, and wherein the thermally conductive pyrolytic graphite
sheet is partially segmented to reduce eddy currents from the inductive
power signal (App. Br. 34).
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We are not persuaded by Appellant’s contention that the “particular
features of the thermally conductive material [, set forth in Appellant’s claim
10,] such as partial segmentation [] are not found in Mariner . . (App. Br.
30; cf. FF 18; Final Act. 12).
Claim 12:
Appellant’s claim 12 ultimately depends from and further limits
Appellant’s claim 1 to require that the housing material comprises a titanium
alloy with high electrical resistance, and wherein the titanium alloy is one or
more of: titanium grade 9 and titanium grade 23 (App. Br. 35).
For the reasons set forth by Examiner, we are not persuaded by
Appellant’s contention that Appellant’s “[c]laim 12 recites that the housing
comprises a specific titanium alloy that is not disclosed in the references
. . .” (id. at 30; cf. FF 17; Final Act. 12-13).
Claim 39:
Having found no deficiency in Examiner’s rejection of Appellant’s
claim 31 over Rogers alone or in combination with Richey, we are not
persuaded by Appellant’s contention that “[c]laim[] 39[] depend[s] on claim
31, and hence [is] patentable over Rogers [alone or in combination with]
Richey for at least the reasons discussed . . . [above], and are patentable over
Schmeling for at least the reasons discussed . . . [above], and are patentable
over Mariner for the reasons discussed . . . above” (App. Br. 31).
In addition, although Appellant appears to contend that the subject
matter of claim 39 is not prima facie obvious over the references when taken
individually, we note that Examiner’s prima facie case of obviousness is
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based on the combination of Rogers, Schmeling, Mariner with or without
Richey (see Final Act. 11—14). Appellant fails to establish a factual basis to
support a conclusion that the subject matter of Appellant’s claim 39 is not
prima facie case of obviousness in view of the combination of Rogers,
Schmeling, Mariner with or without Richey (cf. App. Br. 31).
CONCLUSION OF LAW
The combination of Rogers and Richey.
The preponderance of evidence on this record supports a conclusion
of obviousness with respect to claims 1, 3, 27, 31, 32, and 42. The rejection
of claims 1, 3, 27, 31, 32, and 42 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Rogers and Richey is affirmed. Claim 2 is not
separately argued and falls with claim 1. Claim 30 is not separately argued
and falls with claim 27. Claim 45 is not separately argued and falls with
claim 42.
The preponderance of evidence on this record fails to support a
conclusion of obviousness with respect to claims 28 and 43. The rejection
of claims 28 and 43 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Rogers and Richey is reversed.
The combination of Rogers, Richey, and Mariner.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 4, 5, 13, and 29 under
35 U.S.C. § 103(a) as unpatentable over the combination of Rogers, Richey,
and Mariner is affirmed. Claim 33 is not separately argued and falls with
claim 4. Claims 6, 34, and 35 are not separately argued and fall with claim
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5. Claims 14 and 15 are not separately argued and fall with claim 13. Claim
44 is not separately argued and falls with claim 29.
The combination of Rogers and Schmeling ’032 with or without Richey.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 7 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rogers, Richey, and
Mariner is affirmed. Claims 8, 36, and 37 are not separately argued and fall
with claim 7. Claim 38 is not separately argued and falls with claim 9.
The combination of Rogers, Schmeling ’032, and Mariner.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claims 10 and 12 under
35 U.S.C. § 103(a) as unpatentable over the combination of Rogers, Richey,
and Mariner is affirmed. Claim 11 is not separately argued and falls with
claim 10.
The combination of Rogers, Schmeling ’032, and Mariner with or without
Richey.
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 39 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rogers, Richey, and
Mariner is affirmed. Claims 40 and 41 are not separately argued and fall
with claim 31.
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TIME PERIOD FOR RESPONSE
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-IN-PART
37