11591448 (P.T.A.B. Oct. 26, 2016)

Ex Parte Gerber

Patent Trial and Appeal BoardOct 26, 2016

11591448 (P.T.A.B. Oct. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111591,448 10/31/2006 71996 7590 10/28/2016 SHUMAKER & SIEFFERT, P.A 1625 RADIO DRIVE, SUITE 100 WOODBURY, MN 55125 FIRST NAMED INVENTOR Martin T. Gerber 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. 1023-600US01 7073 EXAMINER D ABREU, MICHAEL JOSEPH ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 10/28/2016 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): pairdocketing@ssiplaw.com medtronic _neuro _ docketing@cardinal-ip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte MARTIN T. GERBER Appeal2014-005032 Application 11/591,448 1 Technology Center 3700 Before STEFAN STAICOVICI, GEORGE R. HOSKINS, and ARTHUR M. PESLAK, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Martin T. Gerber (Appellant) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-13, 16-20, 23-26, and 40- 43.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We REVERSE. According to Appellant, the real party in interest is Medtronic, Inc. Appeal Br. 3 (filed Dec. 20, 2013). 2 Claims 14, 15, 21, 22, and 27-39 are canceled. See Appellant's Amendment 4--5 (filed Dec. 7, 2010). Appeal2014-005032 Application 11/591,448 INVENTION Appellant's invention relates to "[e]lectrical stimulation systems ... used to deliver electrical stimulation therapy to patients." Spec. i-f 2. Claims 1 and 20 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. An implantable elongated member configured to deliver a therapy from a medical device to a target therapy delivery site in a patient, the implantable elongated member comprising: an elongated body extending between a proximal end configured to couple to the medical device and a distal end, wherein the elongated body comprises: a proximal portion including the proximal end; a distal portion including the distal end; and a middle portion located between the proximal portion and the distal portion and adjacent to the proximal portion and distal portion, wherein the proximal portion, the distal portion, and the middle portion have approximately equal lengths; a first fixation element coupled to the proximal portion of the elongated body; a second fixation element coupled to the distal portion of the elongated body; and a third fixation element coupled to the middle portion of the elongated body. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1---6, 9-13, 16-20, 23-26, and 40-43 under 35 U.S.C. Â§ 103(a) as being unpatentable over 2 Appeal2014-005032 Application 11/591,448 Swoyer (US 2003/0045919 Al, pub. Mar. 6, 2003) and Mrva (US 2006/0004429 Al, pub. Jan. 5, 2006). 3 II. The Examiner rejected claims 7 and 8 under 35 U.S.C. Â§ 103(a) as being unpatentable over Swoyer, Mrva, and Tronnes (US 2006/0095078 Al, pub. May 4, 2006). ANALYSIS Rejection I Each of independent claims 1 and 20 requires, inter alia, an "elongated body extending between a proximal end ... and a distal end ... [having] a proximal portion ... [,] a distal portion ... [,] and a middle portion ... , wherein the proximal portion, the distal portion, and the middle portion have approximately equal lengths." See Appeal Br. 16, 19 (Claims App.). The Examiner finds that Swoyer discloses an implantable elongated member having 3 portions - a proximal portion including the proximal end (i.e. Fig. 1 - extending from distal end of # 140 to proximal end of # 105), a distal portion including the distal end (i.e. Fig. 1 - extending from distal tip to proximal end of# 125) and a middle portion located between and adjacent to the proximal portion and distal potion (i.e. Fig. 1 - extending from proximal end of #125 to distal end of# 140). 3 As claims 9 and 16 are discussed in the body of this rejection, we consider the omission of these claims in the heading of the rejection as an inadvertent typographical error. See Final Act. 2, 4 (transmitted June 7, 2013). 3 Appeal2014-005032 Application 11/591,448 Final Act. 3. The Examiner further finds that Mrva discloses an elongated member 12 having fixation elements 76 "coupled to the proximal, distal, and middle portions of the body in order to allow the fixation members to have room to collapse during insertion to prevent undesired contact with tissue while ensuring uniform fixation over the elongated member." Id. (citing Mrva i-fi-f 128-129, Fig. 38). The Examiner concludes that: It would have been an obvious design choice to one of ordinary skill in the art to modify the device of Swoyer to have tines placed in approximately equal proximal, distal, and middle regions as in Mrva, in order to yield the predictable results of providing tines which distribute the fixation throughout the length of the lead. Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the tine distribution along length of the proximal, middle, and distal sections of Swoyer to be approximately equal since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Id. at 3--4. Thus, according to the Examiner, Swoyer discloses "the presence of a proximal, middle, and distal portion with tines coupled to each portion" and "Mrva is simply introduced as a secondary reference to help obviate the placing of tines and fixation elements in 'approximately equal' lengths." Ans. 3 (transmitted Jan. 31, 2014). Appellant argues that in contrast to the Examiner's position, Mrva fails to disclose that fixation elements 7 6 are placed in the proximal, distal, and middle portions of lead 12, but rather are all located in the distal portion of lead 12. See Appeal Br. 7. Thus, as Mrva fails to disclose the claimed locations of fixation elements 7 6, Appellant contends that the Examiner's 4 Appeal2014-005032 Application 11/591,448 reasoning to modify the implantable elongated member of Swoyer, according to Mrva, namely, "to ... provid[ e] tines which distribute the fixation throughout the length of the lead," lacks rational underpinnings. Id. at 9. As Mrva discloses a lead 12 having a proximal end including plug 22 and a distal end including electrode 16 (see Mrva i-f 43, Fig. 3), we agree with Appellant that Mrva's tines 76 are likewise located in the distal portion of lead 12. See Reply Br. 6 (citing Mrva, Figs. 34, 38A, 38B). Moreover, as correctly noted by Appellant, in Figure 5B of Mrva, the entire lead 12 is implanted in the patient's body and electrode 16 is located at the distal tip of lead 12. Id. at 7. Appellant is thus correct that Figures 38A and 38B of Mrva "simply show the distal tip of the lead 12." Id. at 6. Hence, as Mrva discloses tines 7 6 located at the distal end of lead 12, we do not agree with the Examiner's finding that Mrva discloses fixation elements/tines "coupled to the proximal, distal, and middle portions of the [lead] body." See Final Act. 3. Therefore, because Mrva fails to disclose providing tines at proximal, middle, and distal portions of the body of an implantable elongated member, but rather only at the distal tip of lead 12, the Examiner's reasoning to modify the device of Swoyer is based on an erroneous interpretation of the disclosure of Mrva. Accordingly, the Examiner's legal conclusion of obviousness is not supported by facts, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). We thus agree with Appellant that the Examiner's reasoning to combine the teachings of Swoyer and Mrva, namely, to "distribute the fixation throughout the length of the lead," lacks rational underpinnings. See Appeal Br. 9. 5 Appeal2014-005032 Application 11/591,448 Furthermore, Appellant is correct in that "[a] particular parameter must first be recognized as a result-effective parameter ... before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation." Appeal Br. 9. Although we appreciate the Examiner's finding that Swoyer discloses positioning tines in both proximal and distal sections of lead 15 (see Ans. 3 (citing Swoyer i-f 69) ), this does not mean that the lengths of the distal, middle, and proximal portions can be recognized as result-effective variables. Even though each of the distal, middle, and proximal portions of Swoyer's lead 15 has a certain length, the Examiner has not cited to any portion of Swoyer or other prior art that actually recognizes such lengths as result-effective variables. Moreover, we note that claims 1 and 20 do not require that the distribution of the fixation elements (i.e., tines) along the length of the elongated body of the claimed implantable elongated member be at equal lengths, as the Examiner contends, but rather that the proximal, middle, and distal portions of the body "have approximately equal lengths." In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 1---6, 9-13, 16-20, 23-26, and 40-43 as being unpatentable over Swoyer and Mrva. 6 Appeal2014-005032 Application 11/591,448 Rejection II The Examiner's use of Tronnes's disclosure does not remedy the deficiencies of Swoyer and Mrva as discussed supra. See Final Act. 5. Therefore, for the same reasons as discussed above, we also do not sustain the rejection of claims 7 and 8 over the combined teachings of Swoyer, Mrva, and Tronnes. SUMMARY The Examiner's decision to reject claims 1-13, 16-20, 23-26, and 40-43 is reversed. REVERSED 7