Ex Parte Kallmyer et al

Patent Trial and Appeal Board

Nov 29, 2018

13284804 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/284,804 10/28/2011
71996 7590 12/03/2018
SHUMAKER & SIEFFERT, P.A
1625 RADIO DRIVE, SUITE 100
WOODBURY, MN 55125
FIRST NAMED INVENTOR
Todd A. Kallmyer
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.
l 123-063US01/P0035557.USU 9821
EXAMINER
TIJLES, FRANTZ F
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TODD A. KALLMYER, JOHN E. KAST, DAVID P. OLSON,
RANDY S. ROLES, VENKAT R. GADDAM
Appeal2018-000815
Application 13/284,804
Technology Center 3700
Before STEPHEN STAICOVICI, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Medtronic, Inc. Appeal Br.
3.
2 Appeal is taken from the Final Office Action dated January 20, 2017, as
supplemented by the Advisory Action dated April 6, 2017.
Appeal2018-000815
Application 13/284,804
STATEMENT OF THE CASE
Claims 1, 19, 29, 34, and 35 are the independent claims on appeal.
Claim 1, reproduced below, is exemplary of the subject matter on appeal.
1. A device comprising:
a flexible coil configured to at least one of transmit
electrical energy to or receive electrical energy from a
second coil via inductive coupling; and
a phase change material configured in one or more
shapes that allow the phase change material in a solid state
to deform with the flexible coil, wherein the phase change
material is configured to absorb heat from the flexible coil.
THE REJECTIONS
I. Claims 1--4, 10-12, 15, 16, 18-21, 26, 27, 29, 30, and 33-35
stand rejected under 35 U.S.C. § I02(b) as anticipated by Phillips (US
2009/0157148 Al; published June 18, 2009), and alternatively, under 35
U.S.C. § I03(a) as unpatentable over Phillips. 3 Final Act. 2-9.
II. Claims 5 and 31 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over by Phillips and Hashimoto (US 2006/0191344 A 1;
published Aug. 31, 2006). Final Act. 4--5, 8.
III. Claims 10 and 11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over by Phillips and Kudo (US 7,035,532 B2; issued Apr. 25,
2006). Final Act. 5.
3 The inclusion of claims 5 and 31 in the statement of the rejection for
Rejection I appears to be a typographical error. Final Act. 2. Claim 5 is
rejected pursuant to Rejection II, and claim 31 is rejected for the same
reasons as claim 5 and, therefore, also pursuant to Rejection II. Final Act.
4--5, 8 (regarding claim 31, "please see the remarks on claim 5").
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IV. Claim 8 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over by Phillips and Faries (US 6,927,316 B 1; issued Aug. 9,
2005). Final Act. 9.
V. Claims 6, 7, 17, 22-24, 28 and 32 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Phillips and Hickey (US 5,669,584;
issued Sept. 23, 1997). Final Act. 9-10.
VI. Claims 9 and 25 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Phillips and Lachenbruch (US 2003/0109910 Al;
published June 12, 2003). Final Act. 11.
VII. Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Phillips and Shaikh (US 2008/0087270 Al; published
Apr. 17, 2008). Final Act. 11-12.
ANALYSIS
Rejection I
The Anticipation Rejection
Regarding independent claim 1, the Examiner finds that Phillips
discloses a device comprising a flexible coil (i.e., external telemetry
coil 46 of external charging device 48, or secondary charging coil 34
of implantable medical device (IMD) 16) configured to either transmit
electrical energy to or receive electrical energy from a second coil via
inductive coupling, as claimed. Final Act. 2-3 ( citing Phillips ,r 5,
Fig. 3). The Examiner relies on a "strong belief' that Phillips' coils
are flexible, and also that "[i]t is common knowledge that any coil
made of a rigid metal like iron, copper, aluminum ... becomes
flexible because of its coil shape" and similarly, that "a coil made of a
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nonmetal like plastic or polymer ... becomes flexible because of its
coil shape." Adv. Act. 2; see also Ans. 18-19. The Examiner further
relies on Kast as evidence of "a flexible recharge coil ... and flexible
primary coil." Ans. 19. The Examiner also determines that an
ordinary definition of "coil" it to "arrange or wind (something long
and flexible) in joined sequence of concentric circles of rings." Id.
Appellants argue that "the Examiner has failed to show that
Phillips discloses a flexible coil." Appeal Br. 9-10; Reply Br. 2-3.
Appellants also argue that "Kast's description of'~ primary coil that
is flexible' does not provide substantial evidence to support the
Examiner's assertion that 'all those coils [ of Phillips] are flexible' or
that any of the coils described by Phillips are flexible;" rather, "the
Kast disclosure establishes that Kast's primary coil is flexible." Reply
Br. 4.
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently.
Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir.
2016). Claim 1, as set forth supra, recites, in relevant part, "a flexible
coil," and "a phase change material configured ... to deform with the
flexible coil." The Specification discloses that
[t]he flexible coil may conform to non-planar skin surfaces
of the patient . . . . The flexible coil may include insulated
wire wound in an in-plane spiral. This in-plane spiral may
provide a relatively thin coil that can conform to non-planer
surfaces to increase comfort to the patient. The flexible coil
may be encased by a flexible housing that protects the
flexible coil while also allowing the in-plane spiral of wire
to bend and flex out of a single plane.
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Spec. i-f23. The Specification further discloses that "the phase change
material may be configured [to] deform with the flexible coil or
otherwise accommodate flexibility of at least a portion of the flexible
coil." Id. ,r 25. We construe the meaning of the claim term "flexible,"
consistent with the Specification, as "capable of being flexed : capable
of being turned, bowed, or twisted without breaking." WEBSTER'S
THIRD NEW lNT'L DICTIONARY 869 (1993).
Regarding Phillips' telemetry coils 44, 46, Phillips discloses that
"internal telemetry coil 44 [is] configured in conventional manner to
communicate through external telemetry coil 46 to an external programming
device ... or other device in a conventional manner in order to both program
and control [the IMD]." Phillips ,r 59. Although Phillips discloses that coils
34, 44 have a certain shape, wire gauge, number of turns, and/or inside and
outside diameters, Phillips is silent regarding the flexibility ( or rigidity) of
such coils, and there is no evidence in the record regarding the flexibility of
coils constructed as specified in Phillips. Id. Phillips also discloses that
internal telemetry coil 44 is disposed within IMD 16, and external telemetry
coil 46 is disposed within external charging device 58. Id.; see also id., Fig.
3 ( depicting external telemetry coil 46 within external antenna 52 and
internal telemetry coil 44 within housing 32 of IMD 16. Although Phillips
discloses that coils 44, 46 are constructed of 43 and 30 "A WG wire,"
respectively, Phillips is silent regarding the flexibility ( or rigidity) of the
coils resulting from using such wire. Id. ,r 59.
Regarding primary and secondary coils 34, 53, Phillips discloses that
secondary coil 34 is disposed within IMD 16. Phillips ,r 56, Fig. 3. Phillips
also discloses that
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external charging device 48 consists of charging unit 50 and
external antenna 52. Charging unit 50 contains the electronics
necessary to drive primarily coil 54 with an oscillating current in
order to induce current in secondary coil 34 [ of implantable
medical device 16] when primary coil 54 is placed in the
proximity of secondary coil 34.
Phillips ,r 61; see also ,r 57. Phillips discloses that "[p ]rimary coil 54 is
contained in bobbin assembly 86 which sits in bottom housing 88 [ of
external antenna 52]," which is "attachable to patient 18 with bracket 84"
(id. at ,r 65; see also id., Fig. 6). Phillips further discloses that "[a]s bracket
84 is attached to patient 18 with a belt via belt loops 102, the skin surface of
patient 18 is typically not completely flat" and therefore, "[i]t is preferred
that bracket 84 be conformal and flexible in order to conform to the shape of
the body of patient 18." Id. ,r 67 (emphasis added). Thus, Phillips is silent
regarding the flexibility of coils 34, 54, and further, a preponderance of the
evidence supports a determination that Phillips' bracket, not primary coil 54,
is necessarily flexible.
We also agree with Appellants that the record fails to support the
Examiner's determination that Phillips' coils, or coils generally, are
inherently flexible. Rather, we are persuaded by Appellants that unless
specified, a coil may be rigid and incapable of being turned, bowed, or
twisted without breaking. Further, Kast's disclosure of "providing ajlexible
primary coil that can be transcutaneously coupled to a secondary coil of the
implantable device," is evidence that flexibility is an optional attribute of a
coil, as opposed to rigidity, and further, the construction of Phillips' device,
as discuss supra, is distinguishable from Kast's device. Kast, Abstract.
There is no evidence in Phillips that necessitates primary coil 54 being
flexible.
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Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2, 3, 4, 10-12, 15, 16, and 18, under 35
U.S.C. § 102(b) as anticipated by Phillips. The Examiner relies on the same
findings with respect to Phillips in the rejection of independent claims 19,
29, 34, and 35 as the Examiner relied upon in the rejection of independent
claim 1, and therefore, for essentially the same reasons as stated supra, we
do not sustain the Examiner's rejection of independent claims 19, 29, 34,
and 35, and claims 26, 27, 30, and 33 depending therefrom. Final Act. 7, 8,
9.
The Obviousness Rejection
Alternatively, the Examiner determines that "heat exchange flexible
coil[s] are known feature[s] in the art." Final Act. 3. The Examiner reasons
that it would have been obvious to a person of ordinary skill in the art "to
provide a flexible coil to take any desired shape while including [a] flexible
heat exchange coil shape for the purpose of positioning the coil effectively
on a desired surface in order to absorb heat effectively from one body ( 46) to
another (the phase change material (62)[)]." Final Act. 4.
Appellants argue that
Phillips does not describe telemetry coils 44 or 46, primary coil
5 [ 4], or secondary coil 34 as being "heat exchange flexible
coil[ s ]" to "effective[ly] [ ex ]change heat from one body or
another" or even what benefit such a heat exchange coil would
provide for the system of Phillips. Instead, Phillips discloses
"external telemetry coil 46 . . . to communicate to or from
implantable medical device 16" and "electronics necessary to
drive primary coil 54 with an oscillating current in secondary coil
34."
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Appeal Br. 12. Appellants conclude that "the Examiner failed to show that a
person of ordinary skill in the art would have had a rational reason to modify
the telemetry coil 46 of Phillips to be flexible." Id. at 14.
The Examiner responds that "[i]f the secondary coil is not flexible, the
patient will not [feel] comfortable with a non-flexible or rigid coil in his/her
body," maintaining that this is "common knowledge." Ans. 20.
Appellants reply that the Examiner is relying on "impermissible
hindsight." Reply Br. 7; see, e.g., Spec. ,r 23 ("[t]he flexible coil may
conform to non-planar skin surfaces of the patient"; "[an] in-plane spiral ...
may provide a relatively thin coil that can conform to non-planar surfaces to
increase comfort to the patient"; "[t]he flexible coil may be encased by a
flexible housing that protects the flexible coil while also allowing the in-
plane spiral of wire to bend and flex out of a single plane").
We agree Appellants that the Examiner has failed to provide a reason
with rational underpinning for modifying any of Phillip's coils 44, 46, 52, 54
to be flexible, in view of Kast's disclosure of a flexible primary coil. See In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an obviousness
conclusion to be based on explicit articulated reasoning with rational
underpinning) cited with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). As discussed supra, Phillip's coils 44, 46, 52, 54 are
internal components, within antennas and/or housings, which-unlike
Phillip's flexible bracket 84---are not in contact with the patients' skin. The
Examiner's determination that coils disposed within a patient are necessarily
flexible is conclusory and lacks support in the record.
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Accordingly, we also do not sustain the Examiner's rejection of
claims 1--4, 10-12, 15, 16, 18-21, 26, 27, 29, 30, and 33-35, under 35
U.S.C. § 103(a) as unpatentable over Phillips.
Rejections II-VII
The deficiencies in the Examiner's reliance on Phillips as discussed
supra with respect to independent claims 1, 19, 29, 34, and 35 is not cured
by the Examiner's reliance on (i) Hashimoto for disclosing the use of film
(id. at 9); (iii) Kudo for teaching a spiral phase change material (id. at 5);
(iv) Hickey for disclosing flexible tubes containing phase change material
(id. at 9-10); (v) Lachenbruch for teaching the use of phase change material
encapsulated in micro capsules (id. at 11); and (vi) Shaikh for teaching phase
change material in concentric rings (id. at 11 ).
Accordingly, for essentially the same reasons as set forth supra with
respect to the Examiner's rejection of independent claims 1, 19, 29, 34, and
35, we also do not sustain the Examiner's rejection of claims 5-11, 13, 14,
17, 22-25, 28, 31, and 32 depending therefrom.
DECISION
The Examiner's decisions rejecting claims 1--4, 10-12, 15, 16, 18-21,
26, 27, 29, 30, and 33-35 under 35 U.S.C. § 102(b) as anticipated by
Phillips, and alternatively, under 35 U.S.C. § 103(a) as unpatentable over
Phillips, are REVERSED.
The Examiner's decisions rejecting claims 5-11, 13, 14, 17, 22-25,
28, 31, and 32, under 35 U.S.C. § 103(a), as unpatentable over Phillips in
view of Hashimoto, Kudo, Faries, Hickey, Lachenbruch, and Shaikh are
REVERSED.
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REVERSED
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