Ex Parte Gore

Patent Trial and Appeal Board

Aug 8, 2016

12403744 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/403,744 03/13/2009
85729 7590 08/09/2016
Boston Scientific Neuromodulation (SVI & JHU)
c/o Lowe Graham Jones
701 Fifth Avenue
Suite 4800
Seattle, WA 98104
Brian Gore
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.
1362002-2018.1 1279
EXAMINER
PIA TES KI, ERIN M
ART UNIT PAPER NUMBER
3766
MAILDATE DELIVERY MODE
08/09/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN GORE
Appeal2014-007242
Application 12/403,744
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and THOMAS F. SMEGAL,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian Gore (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1-12, 20, and 21. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal2014-007242
Application 12/403,744
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A medical device comprising:
an elongate body having opposing proximal and distal end
portions with an axially extending center cavity;
at least one conductor extending along the elongate body,
each of the at least one conductor comprising at least one current
suppression module, each of the at least one current suppression
module comprising a conductor configuration with a backward
section extending in a first lengthwise direction between two
forward sections extending in a second lengthwise direction that
is opposite the first lengthwise direction with the backward
section and two forward sections being part of a single conductor
of the at least one conductor;
an internal drive shaft residing in the center cavity, the
drive shaft having a proximal end portion with a rotatable spline
residing in the proximal end portion of the elongate body; and
an extendable member held in the distal end portion of the
elongate body, the extendable member in communication with
the drive shaft, whereby rotation of the drive shaft causes the
extendable member to extend out of the elongate body.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Yoshimori
Gold
Williams
Sommer
Osypka
Putz
Seddiqui
Marshall
us 4,149,104
us 4,463,765
US 6,920,361 B2
US 2003/0204232 Al
US 2004/0014355 Al
US 2006/0129102 Al
US 2006/0149127 Al
US 2007 /0255377 Al
2
Apr. 10, 1979
Aug. 7, 1984
July 19, 2005
Oct. 30, 2003
Jan.22,2004
June 15, 2006
July 6, 2006
Nov. 1, 2007
Appeal2014-007242
Application 12/403,744
REJECTIONS
I. Claims 1, 6-8, and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gold, Williams, Yoshimori, and Marshall.
II. Claims 1, 3, 5-9, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sommer, Gold, Williams,
Yoshimori, and Marshall.
III. Claims 2, 4, and 21 are rejected under 35 U.S.C. 103(a) as
unpatentable over Sommer, Gold, Williams, Yoshimori, 1
Marshall, and Osypka.
IV. Claims 10-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sommer, Gold, Williams, Yoshimori, 2
Marshall, Putz, and Seddiqui.
DISCUSSION
Rejection I
Appellant argues claims 1, 6-8, and 20 together. See Appeal Br. 6-8;
see also Reply Br. 2-6. We select independent claim 1 as the illustrative
claim, and claims 6-8 and 20 stand or fall with claim 1.
1 Although the statement of this rejection does not include Yoshimori, claims
2 and 4 depend from claim 1 and claim 21 depends from claim 20. As
claims 1 and 20 stand rejected based on the combined teachings of Sommer,
Gold, Williams, Yoshimori, and Marshall, we understand the omission of
Yoshimori to be a typographical error.
2 The statement of this rejection also does not include Yoshimori; however,
claims 10-12 depend from claim 1. Accordingly, we understand the
omission of Yoshimori to be a typographical error.
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Appeal2014-007242
Application 12/403,744
The Examiner finds that Gold, Williams, Yoshimori, and Marshall
disclose or suggest all of the limitations of claim 1. Final Act. 2--4. In
particular, the Examiner finds that
Williams teaches an elongated implantable lead with a conductor
(Williams Abstract) that has a reverse-wound current
suppression module (Williams Figs. 1 A and 1 B) that is a
conductor configuration with a backward section extending in a
first lengthwise direction between two forward sections
extending in a second lengthwise direction that is opposite the
first lengthwise direction.
Id. at 3 (citing Williams, Figs. IB, IC, 2:55-3:46). In addition, the
Examiner finds that "Yoshimori teaches that multi-layer conductors with
forward and backward sections may be wound from a single conductor." Id.
at 4 (citing Yoshimori Fig. 4d). Based on these findings, the Examiner
determines that it would have been obvious "to incorporate Yoshimori' s
teaching of a single conductor with forward, backward, and forward
segments because the increased number of coils increases the inductance of
the coil." Id.
Appellant argues that the Final Action mischaracterizes Williams' s
reverse wound electrodes in equating them to the claimed current
suppression modules and note that Williams does not refer to its wound
conductors as current suppression modules. See Appeal Br. 6; see also
Reply Br. 2-3. Appellant further argues that "it would be odd if the
electrodes of Williams suppressed current because the objective of the
electrodes is to deliver current." Reply Br. 6. In addition, Appellant argues
that "Marshall does not teach or suggest such an arrangement either. Id. at
7.
To the extent that Appellant is arguing that Williams alone does not
teach current suppression modules, Appellant's argument is not responsive
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Appeal2014-007242
Application 12/403,744
to the rejection as articulated by the Examiner which relies upon Williams to
teach coiled conductors and Marshall to teach use of such conductors for
current suppression. See Ans. 17. Furthermore, Appellant's bald assertion
that Marshall does not teach current suppression modules is unconvincing
because Appellant does not explain what Marshall's teaching is lacking.
Thus, Appellant does not apprise us of error.
Appellant further argues that "Yoshimori, however, is non-analogous
art to the present claimed subject matter and to Gold, Williams, and
Marshall," because "Yoshimori is directed to a 'Coil Heater of an Indirectly
Heated type Cathode Electrode of Electronic Tubes."' Appeal Br. 7 (citing
Yoshimori, Title); Reply Br. 3 (also citing Yoshimori, Title).
Appellant's argument is unconvincing, because even if a reference is
in a different field of endeavor than the invention, the reference is not non-
analogous art if it is "is reasonably pertinent to the particular problem with
which the inventor is involved." In re Klein, 647 F.3d 1343, 1348 (Fed. Cir.
2011) (internal quotations omitted). As the Examiner explains, Y oshimon 1s
reasonably pertinent to the problem of winding a single conductor in both
forwards and backwards directions for simplicity of manufacture. See Ans.
18. The fact that Yoshimori's coil is used to generate heat is inapposite, as
the rejection does not contemplate replacement of Williams' coil with
Yoshimori' s coil. Appellant does not explain why Yoshimori isn't
reasonably pertinent to the problem of winding a coil in the manner claimed;
thus, Appellant does not apprise us of error.
In the Reply Brief, Appellant responds to several assertions made by
the Examiner in the Answer. See Reply Br. 4---6. However none of these
assertions are relied upon in the rejection of claim 1. See Final Act. 2--4.
Thus, we need not address the merits of these statements.
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Appeal2014-007242
Application 12/403,744
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 6-8 and 20, which fall therewith as unpatentable over Gold,
Williams, Yoshimori, and Marshall.
Rejection II
Appellant raises substantially the same arguments with respect to this
rejection as for Rejection I. See Appeal Br. 9-11; Reply Br. 7-11. These
arguments are unconvincing or not considered for the reasons discussed
supra.
We sustain the Examiner's decision rejecting claims 1, 3, 5-9, and 20
as unpatentable over Sommer, Gold, Williams, Yoshimori, and Marshall.
Rejection III
Noting that " [ c] laims 2 and 4 depend from claim 1 and claim 21
depends from claim 20," Appellant argues that "Osypka does not address
any of the deficiencies described with respect to Sommer, Gold, Williams,
and Marshall." Appeal Br. 12; Reply Br. 12.
As we find no deficiencies in Sommer, Gold, Williams, iviarshall, and
Yoshimori as discussed supra, Appellant's argument is unconvincing. We
sustain the Examiner's decision rejecting claims 2, 4, and 21.
Rejection IV
Noting that " [ c] laims 10-12 depend from claim 1," Appellant argues
that "Putz and Seddiqui do not address any of the deficiencies described
with respect to Sommer, Gold, Williams, and Marshall." Appeal Br. 13;
Reply Br. 13.
As we find no deficiencies in Sommer, Gold, Williams, Marshall, and
Yoshimori as discussed supra, Appellant's argument is unconvincing. We
sustain the Examiner's decision rejecting claims 10-12.
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Appeal2014-007242
Application 12/403,744
DECISION
The Examiner's rejections of claims 1-12, 20, and 21 are
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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