Ex Parte Janzig et al

Board of Patent Appeals and Interferences

Jun 4, 2012

10730877 (B.P.A.I. Jun. 4, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DARREN A. JANZIG, CARL D. WAHLSTRAND,
PAULETTE C. OLSON and ROBERT M.. SKIME
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Appeal 2010-004084
Application 10/730,877
Technology Center 3700
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Before KEN B. BARRETT, CHARLES N. GREENHUT and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004084
Application 10/730,877

2
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-15, 17-32 and 34-36. Claims 16 and 33 were cancelled
(App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-
IN-PART.

The Claimed Subject Matter
The claimed subject matter is directed to an implantable medical
device having a plurality of integrated circuits and other discrete
components mounted on a circuit board within a housing, the integrated
circuits or discrete components are arranged on the circuit board to conform
to a first predetermined non-linear profile that is based on the housing’s
second non-linear profile. Claim 1 is illustrative of the claims on appeal and
is reproduced below:
1 An implantable medical device comprising:
a plurality of integrated circuits;
a plurality of discrete components;
a circuit board that is coupled to each of the integrated circuits
and discrete components; and
a housing to house the circuit board,
wherein the circuit board comprises first and second opposing
surfaces, the housing houses the first and second surfaces, each of the
integrated circuits is located on the first surface, and each of the
discrete circuit components is located on the second surface, and
wherein at least one of the integrated circuits or discrete
components are arranged on the respective one of the first or second
surfaces to substantially conform to a first predetermined non-linear
profile that is based on a second non-linear profile of the housing.

References Relied on by the Examiner
Weinberg US 5,144,946 Sep. 8, 1992
Appeal 2010-004084
Application 10/730,877

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Weinberg US 5,674,260 Oct. 7, 1997
Bardy US 2002/0042634 A1 Apr. 11, 2002

The Rejections on Appeal1,2
1. Claims 1-15 and 17-21 are rejected under 35 U.S.C. 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention
(Ans. 3).
2. Claims 1-9, 15, 17-22, 29-323, 34 and 35 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Weinberg ʼ946 (Ans. 4).
3. Claims 1, 9, 10, 15, 18-21, 32 and 35 are rejected as being anticipated
under 35 U.S.C. § 102(b) by Weinberg ʼ260 (Ans. 5).
4. Claims 10-14 and 25-284 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weinberg ʼ946 (Ans. 8).
5. Claims 11-14 and 25-26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weinberg ʼ260 (Ans. 10).
6. Claims 8, 23 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weinberg ʼ946 and Bardy (Ans. 11).

1 Claims 22, 25, 26, 28-32, 34 and 35 were rejected as being anticipated by
Engmark in the Final Rejection. This rejection is not repeated in the
Examiner’s Answer. The rejection under Engmark is deemed withdrawn.
2 The Examiner offers no rejection of the subject matter of claim 36 and
accordingly, the Board does not undertake an analysis of claim 36.
3 Dependent claim 30 is believed to have been mistakenly omitted by the
Examiner in this rejection. Appellants address claim 30 in their briefs (see
App. Br. 16 and Reply Br. 15).
4 Dependent claims 27 and 28 are believed to have been mistakenly omitted
by the Examiner in this rejection. The additional limitations of claims 27
and 28 are identical to claims 13 and 14 rejected by the Examiner.
Appeal 2010-004084
Application 10/730,877

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ANALYSIS
The rejection of claims 1-15 and 17-21 under 35 U.S.C. 112, second
paragraph, as being indefinite
Claims 2-15 and 17-21 each depend (directly or indirectly) from claim
1. Claim 1 includes the claim limitation of a “second non-linear profile of
the housing” which the Examiner indicates is “unclear” as “there is
insufficient antecedent basis for this limitation since the specification does
not describe a ‘second profile’” (Ans. 3, see also 11). Appellants state, and
we agree, that the disclosure as originally filed does not have to provide in
hoec verba support for the claimed subject matter at issue (App. Br. 7).
Appellants also contend that the recitation of first and second non-linear
profiles in claim 1 is “to distinguish between the recited profiles” and that
the claimed ‘“second non-linear profile of the housing’ clearly refers to a
profile of a housing of the medical device” (App. Br. 8). Appellants refer to
Paragraphs 10 and 40 of the Specification discussing a concave (i.e., “non-
linear”) housing (App. Br. 8, see also Fig. 7 and arcs 124A and 124B of the
housing (Spec. ¶ [0067])). In view of Appellants’ disclosures of a concave
housing, we are not persuaded that this claim term is unclear or that this term
is not described in the Specification as stated by the Examiner (Ans. 3, 11).
We reverse the Examiner’s rejection of claims 1-15 and 17-21 as being
indefinite.

The rejection of claims 1-9, 15, 17-22, 29-32, 34 and 35
as being anticipated by Weinberg ʼ946
Appellants argue claims 1-3, 5, 6, 9 and 19-21 together as a group
(App. Br. 9). We select independent claim 1 for review with claims 2, 3, 5,
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Application 10/730,877

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6, 9 and 19-21 standing or falling with claim 1 (37 C.F.R. § 41.37(c)(1)(vii)
(2011)).
Claim 1 require a housing to house a circuit board and that at least one
of the integrated circuits or discrete components are arranged on a surface of
the circuit board “to substantially conform to a first predetermined non-
linear profile that is based on a second non-linear profile of the housing.”
The Examiner references Weinberg ʼ946, and particularly Figures 4A and
4B, as disclosing electrical components that “vary in height” and “are made
to fit in the housing” and that “the housing includes a non-linear rounded
corners (i.e. non-linear profile)” such that “the components are arranged in a
first predetermined non-linear profile ‘based’ on a second non-linear profile”
(Ans. 4, see also 11).
Appellants contend that the electrical components of Weinberg ʼ946
are not arranged as claimed because their profile is not “based on a profile of
the housing” as the Examiner asserts (App. Br. 10). Appellants provide no
explicit definition for the claim term “based on” and accordingly, this term is
provided its broadest reasonable interpretation consistent with the
specification. We agree with the Examiner that the height-variable electrical
components of Weinberg ʼ946 “are made to fit in the housing” and that “the
components are arranged in a first predetermined non-linear profile ‘based’
on a second non-linear profile,” i.e., the housing’s “non-linear rounded
corners” (Ans. 12). We sustain the Examiner’s rejection of claims 1-3, 5, 6,
9 and 19-21.
Claim 4 depends from claim 3 which depends from claim 1. Claim 4
is separately argued by Appellants (App. Br. 12). Claim 3 further requires
the telemetry coil to encircle the circuit board while claim 4 further requires
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Application 10/730,877

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the telemetry coil to be “substantially uneclipsed by the circuit board.” In
addressing the rejection of both claims 3 and 4, the Examiner finds that
Weinberg ʼ946 meets these claim requirements because Weinberg ʼ946
“depicts the telemetry coil 59 encircling the circuit board in figure 4B and
located in a different plane than the circuit board” (Ans. 4, see also 12).
Appellants contend that the telemetry coil 59 of Weinberg ʼ946 “is
completely eclipsed by the substrate 54” and not “uneclipsed” as claimed
(App. Br. 12, see also Reply Br. 8). Appellants provide no explicit
definition for the claim term “uneclipsed” and accordingly, this term is
provided its broadest reasonable interpretation consistent with the
specification. Appellants’ Specification employs the claim term
“uneclipsed” in reference to improving “inductive coupling efficiency
between an external coil (not shown) and a telemetry coil” and in a manner
consistent with the term unobstructed (Spec. ¶ [0058]). Regarding physical
location, Appellants’ Specification allows for the plane of the circuit board
to be “different” than the plane of the telemetry coil (Spec. ¶ [0059]). In
view of Figure 4B of Weinberg ʼ946 (relied on by the Examiner) which
illustrates telemetry coil 59 in a plane different from that of circuit board 54,
and also not obstructed thereby in the view shown, we are not persuaded by
Appellants’ contention and accordingly, we sustain the Examiner’s rejection
of claim 4.
Claim 7 depends from claim 3 and further requires a housing having a
central portion and a taper portion with the circuit board located within the
central portion and the telemetry coil located within the taper portion. The
Examiner references Figure 2 of Weinberg ʼ946 as disclosing this claim
limitation and particularly that “the rounded edges of the medical device
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Application 10/730,877

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housing constitute tapered portion” (Ans. 12). The Examiner reasons that
since “the coil extends towards the tapered portion of the medical device, the
examiner considers the telemetry coil to be located in the tapered portion”
(Ans. 12). Appellants disregard the Examiner’s construction of the rounded
edges constituting the tapered portion and instead assert that “the housing 12
does not define a central portion and a taper portion” (App. Br. 14).
Appellants also contend that “FIG. 2 fails to illustrate the telemetry coil 59
in the rounded part of the housing 12 (the ‘taper portion’ according to the
Examiner)” yet when the exploded view of Figure 2 is assembled, it would
be in the rounded part of the housing (Reply Br. 11). Accordingly,
Appellants’ contention is not persuasive and we sustain the Examiner’s
rejection of claim 7.
Claim 8 depends from claim 1 and further requires that “the first
predetermined non-linear profile comprises the second profile of the
housing.” The Examiner states that (as previously discussed) “the
components are in fact arranged in a non-linear profile with respect[] to
second non-linear profile of the housing as depicted in figures 4A & 4B”
(Ans. 13). Appellants reiterate arguments previously presented that are not
deemed persuasive (App. Br. 15, Reply Br. 12). We sustain the Examiner’s
rejection of claim 8.
Claims 15, 17 and 18 are argued together as a group and we select
claim 15 for review. Claim 15 requires a “feedthrough on a side surface [of
the housing] that is oriented at a non-parallel, non-perpendicular angle
relative to a major surface of the housing.” The Examiner references Figure
2 of Weinberg ʼ946, and specifically identifies “the rounded bottom of the
medical device” as being the major surface (Ans. 13). The Examiner
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Application 10/730,877

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reasons that since this “surface is curved, the feedthroughs are thus located
at a ‘non-parallel, non-perpendicular angle’” (Ans. 13). Appellants’
disagree with the surface identified by the Examiner and proffer two other
surfaces (Surface A and Surface B) in place of the Examiner’s rounded
bottom (App. Br. 15, Reply Br. 13, 14). Appellants’ arguments directed to
these other surfaces does not obviate the selection made by the Examiner.
Appellants’ contentions are not persuasive and we sustain the Examiner’s
rejection of claims 15, 17 and 18.
Claims 22 and 29-31 are argued together as a group and we select
claim 22 for review. Independent claim 22 requires that the telemetry coil
be “substantially uneclipsed by the circuit board” in a perpendicular
direction. Appellants summarize the discussion of claim 4 above and further
contend that Weinberg ʼ946 “does not provide any description to support the
Examiner’s assertion” (App. Br. 17, see also Reply Br. 15). The Examiner
relies on Figure 4B of Weinberg ʼ946 which illustrates telemetry coil 59 that
is “substantially uneclipsed by the circuit board” in a direction substantially
perpendicular to a plane of either the telemetry coil or the circuit board.
Accordingly, Appellants contention is not persuasive and we sustain the
Examiner’s rejection of claims 22 and 29-31.
Claims 32, 34 and 35 are argued together as a group and we select
claim 32 for review. Independent claim 32 requires “a feedthrough that is
oriented at a non-parallel, non-perpendicular angle relative to the major
surface.” Appellants summarize the arguments previously presented with
respect to claim 15 above (App. Br. 18, Reply Br. 16). For the same reasons
previously discussed, these arguments are not persuasive and we sustain the
Examiner’s rejection of claims 32, 34 and 35.
Appeal 2010-004084
Application 10/730,877

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The rejection of claims 1, 9, 10, 15, 18-21, 32 and 35
as being anticipated by Weinberg ʼ260
Appellants argue claims 1, 9 and 19-21 together as a group (App. Br.
18). We select claim 1 for review with claims 9 and 19-21 standing or
falling with claim 1. Appellants contend that platform 36 and substrate 38
disclosed in Weinberg ʼ260 do not define a circuit board and further that
these components do not have the claimed non-linear profile that is “based
on” a non-linear profile of the housing (App. Br. 18-19, see also Reply Br.
16-18). Appellants reiterate the reasons “discussed above with respect to
claim 1 and Weinberg ʼ946” (App. Br. 19). Figure 3 of Weinberg ʼ260
(referenced by the Examiner) discloses a “multi-level circuit structure”
having integrated circuits 34 and 40 at different levels and additional
components underneath (Weinberg ʼ260 3:15-26). As with Weinberg ʼ946,
the Examiner notes that the housing of Weinberg ʼ260 also “includes [] non-
linear rounded corners (i.e. non-linear profile)” (Ans. 6). In view of this
disclosure and our previous analysis, we are not persuaded by Appellants’
contentions. We sustain the Examiner’s rejection of claims 1, 9 and 19-21.
Claim 10 requires that each discrete component have a height and be
“arranged on the second surface of the circuit board such that the heights of
the discrete components predominantly decrease from an edge of the second
surface of the circuit board to a center of the second surface of the circuit
board.” The Examiner states that “the heights of components 72 as
depicted in figure 6 [of Weinberg ʼ260] are smaller at the edge of the board
and higher at the center. For example, the components farthest to the right
and farthest to the left are shorter than the three in the center. Therefore,
Weinberg ʼ260 does meet the claim limitation” (Ans. 15). We disagree that
the Examiner’s finding satisfies the limitation of claim 10 which requires
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Application 10/730,877

10
that component height decrease (not increase) from an edge of the circuit
board to the center of the board. We reverse the Examiner’s rejection of
claim 10.
Appellants argue claims 32 and 35 together as a group (App. Br. 22).
We select independent claim 32 for review. Appellants contend that
“Weinberg ʼ260 does not disclose a feedthrough, and the Examiner appears
to be relying on an improper finding of an inherent disclosure to support the
rejection of independent claim 32 (as well as the rejection of claims 15, 18
and 35)” (App. Br. 23, see also Reply Br. 19-20). Appellants’ arguments are
not persuasive. The Examiner references Figure 5 of Weinberg ʼ260 noting
its internal circuitry and stating that “it follows that there is a feedthrough”
to enable wire connection to this circuitry (Ans. 7). We agree that a
feedthrough is warranted for the pacemaker of Weinberg ʼ260 to establish a
wire connection between this internal circuitry and external leads 28 (see
Weinberg ʼ260 2:61-64 and Fig. 1). Further, in light of the Examiner’s
identification of the rounded housing surface disclosed in Weinberg ʼ260,
Appellants’ reiteration of the ‘non-parallel, non-perpendicular’ arguments
previously presented are not persuasive (Ans. 7, App. Br. 24, see also Reply
Br. 20). Appellants do not present separate arguments regarding claims 15
and 18 other than to state that “[f]or at least the reasons discussed [above]
with respect to independent claim 32, Weinberg ʼ260 fails to anticipate
claim 15, as well as claim 18” (App. Br. 22, see also Reply Br. 19). We
sustain the Examiner’s rejection of claims 15, 18, 32 and 35.

The rejection of claims 11-14 and 25-28
as being unpatentable over Weinberg ʼ946
Appeal 2010-004084
Application 10/730,877

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Dependent claims 11, 12, 25 and 26 are directed to a range of
numerical thicknesses for the circuit board (claims 11 and 25) and the
housing (claims 12 and 26). The Examiner states that the discovery of an
optimum or workable range involves only routine skill in the art and that
small components have the predictable result of having a narrower profile
that occupies less space (Ans. 9). Appellants contend that the Examiner has
failed to indicate how the claimed thicknesses are optimized in view of
Weinberg ʼ946 and further that Weinberg ʼ946 is silent on the issue such that
the Examiner’s proposed rationale lacks a reasonable basis (App. Br. 31).
We do not dispute the Examiner’s finding that smaller components occupy
less space and are less noticeable when implanted, however, we are not
persuaded that the Examiner has adequately explained how the specific
thickness dimensions recited in claims 11, 12, 25 and 26 would have been
obvious as optimum or workable ranges. We reverse the Examiner’s
rejection of claims 11, 12, 25 and 265.
Appellants present no argument regarding the Examiner’s rejection of
claims 13 and 14 (App. Br. 30, 32), nor corresponding claims 27 and 28
which we understand were mistakenly omitted (see footnote 4).
Accordingly, we sustain the rejection of these claims.

5 The Examiner also rejects claims 11, 12, 25 and 26 as being unpatentable
over Weinberg ʼ260 (Ans. 10). Two of these claims, claims 25 and 26,
depend from independent claim 22 and the Examiner has not rejected parent
claim 22 as being either anticipated or unpatentable over Weinberg ʼ260.
Accordingly, the Examiner’s rejection of claims 25 and 26 as being obvious
over Weinberg ʼ260 is believed to be in error (see also App. Br. 32). The
Examiner’s rejection of claims 11 and 12 as being unpatentable over
Weinberg ʼ260 (see Ans. 10) is deficient for the same reasons discussed
supra.
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Application 10/730,877

12
The rejection of claims 23 and 24 as being unpatentable
over Weinberg ʼ946 and Bardy
Regarding claim 23, Appellants do not dispute the Examiner’s
additional recitation to Bardy but instead assert that Bardy fails to cure the
fundamental deficiencies of Weinberg ʼ946 with respect to parent claim 22
(App. Br. 34). This assertion is not persuasive and we sustain the
Examiner’s rejection of claim 23.
Regarding claim 24, Appellants allege that the Examiner failed to
address the requirements of claim 24 (App. Br. 34). We do not agree. The
Examiner relies on Bardy for disclosing a curved housing (Ans. 11) and the
Examiner has already discussed the teaching in Weinberg ʼ946 of the
telemetry coil being located within a tapered portion of the housing in the
discussion of claim 7 above (see Ans. 12). Accordingly, we sustain the
Examiner’s rejection of claim 24.

DECISION
The Examiner’s rejection of claims 1-15 and 17-21 being indefinite is
reversed.
The Examiner’s rejections of claims 1-9, 13-15, 17-24, 27-32, 34 and
35 are affirmed.
The Examiner’s rejections of claims 10, 11, 12, 25 and 26 are
reversed.

AFFIRMED-IN-PART

MP