Ex Parte Jimenez et al

Board of Patent Appeals and Interferences

Jan 20, 2012

10998486 (B.P.A.I. Jan. 20, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/998,486 11/29/2004 Oscar Jimenez 151-P-9399US02 4851
54228 7590 01/20/2012
IPLM GROUP, P.A.
POST OFFICE BOX 18455
MINNEAPOLIS, MN 55418
EXAMINER
STOKLOSA, JOSEPH A
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE
01/20/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte OSCAR JIMENEZ, GUILLERMO ECHARRI, JOHN E. KAST,
JAMES E. RIEKELS, and MARK E. SCHOMMER
____________

Appeal 2010-008936
Application 10/998,486
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ERICA A.
FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 17 and 28-38, the
only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of coupling electromagnetic flux
from a primary charging coil (claim 17) and a method of charging of an
implantable medical device with a primary charging coil (claims 28-38).
Appeal 2010-008936
Application 10/998,486

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Claim 17 is representative and is reproduced in the “LISTING OF
CLAIMS” (App. Br. 15).
Claims 17 and 28-38 stand rejected under the written description
provision of 35 U.S.C. § 112, first paragraph.
We reverse.
ISSUE
Does the preponderance of evidence on this record support the
Examiner’s conclusion that Appellants’ Specification fails to provide
descriptive support for a magnetic shield positioned only on the first side of
a secondary charging coil?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds “support for the magnetic shield being located on the
first side of the coil, figures 4a-b” (Ans. 3-4).
FF 2. For clarity Appellants’ Fig. 4b is reproduced below:

FIG. 4b is a block diagram illustrating the “secondary recharging coil 68[]
and a magnetic shield 70” (Spec. 5: ¶ [33] and 7: ¶ [50]).
Appeal 2010-008936
Application 10/998,486

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FF 3. Notwithstanding Examiner’s foregoing statement (FF 1), “Examiner
is unable to find support for the claim limitation that the shield member be
on only one side of the coil in combination with the other elements in the
claim(s)” (Ans. 3).
FF 4. Examiner finds that Appellants’ “disclosure fail[s] to preclude the
coil being located on any other sides or additional sides” (Ans. 4).
ANALYSIS
The Examiner admits that Appellants have descriptive support for
a magnetic shield positioned only on the first side of a secondary charging
coil (FF 1-2). Having disclosed the feature required by the claimed
invention, Appellants satisfied the requirements of the written description
provision of 35 U.S.C. § 112, first paragraph. As Appellants explain “it is
for the inventor to decide what bounds of protection he will seek” (App. Br.
12, quoting In re Johnson, 558 F.2d 1008, 1018 (CCPA 1977)). Therefore
we are not persuaded by the Examiner’s assertion that Appellants’
“disclosure fail[s] to preclude the coil being located on any other sides or
additional sides” (FF 4).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support the
Examiner’s conclusion that Appellants’ Specification fails to provide
descriptive support for a magnetic shield positioned only on the first side of
a secondary charging coil. The rejection of claims 17 and 28-38 under the
written description provision of 35 U.S.C. § 112, first paragraph is reversed.

Appeal 2010-008936
Application 10/998,486

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REVERSED

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