Ex Parte Maile et al

Patent Trial and Appeal Board

Feb 8, 2019

14953987 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/953,987 11/30/2015
11050 7590 02/12/2019
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Keith R. Maile
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.
1001.3644101 5993
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEITH R. MAILE, JOHN M. EDGELL,
MATHEW L. GILK, BRIAN L. SCHMIDT,
BENJAMIN J. HAASL, and JAMES E. BLOOD 1
Appeal2018-004699
Application 14/953,987
Technology Center 3700
Before JENNIFERD. BAHR, JAMES P. CALVE, and
NATHAN A. ENGELS, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Office Action
finally rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Cardiac Pacemakers, Inc. is identified as the real party in interest. Appeal
Br. 3.
Appeal 2018-004699
Application 14/953,987
CLAIMED SUBJECT MATTER
Claims 1, 11, and 19 are independent. Claim 1 is reproduced below.
1. An implantable medical device (IMD) configured
for implantation within a patient, the IMD comprising:
a hermetically sealed elongated housing having a length
dimension and a width dimension with the length dimension
being greater than the width dimension;
two or more electrodes electrically exposed outside of the
housing;
an energy storage device disposed within the housing;
a circuit disposed within the housing and electrically
connected to the energy storage device and the two or more
electrodes;
wherein the circuit comprises two or more island sections
with each island section electrically connected to at least one
other island section by a ribbon section, wherein each island
section has two opposing major surfaces; and
a first one of the two or more island sections and a
second one of the two or more island sections are stacked
within the housing such that one of the two opposing major
surfaces of the first island section faces one of the two opposing
major surfaces of the second island section and is transverse to
the length dimension.
REJECTIONS
Claims 1-10 are rejected under 35 U.S.C. § 103 as unpatentable over
Greenhut (US 2014/0214104 Al, pub. July 31, 2014) and Wahlstrand (US
2004/0176818 Al, pub. Sept. 9, 2004). 2
Claims 19 and 20 are rejected under 35 U.S.C. § 103 as unpatentable
over Wahlstrand.
2 The Examiner relies on Chiao (US 2016/0220814 Al, pub. Aug. 4, 2016)
to teach circular circuit boards as recited in claim 4. Final Act. 5; Ans. 3.
2
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Application 14/953,987
Claims 11-17 are rejected under 35 U.S.C. § 103 as unpatentable over
Greenhut, Wahlstrand, and Swanson (US 2011/0230923 Al, pub. Sept. 22,
2011).
Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable over
Greenhut, Wahlstrand, Swanson, and Maghribi (US 2006/0042830 Al, pub.
Mar. 2, 2006).
ANALYSIS
Claims 1-10 Unpatentable Over Greenhut and Wahlstrand
Appellants argue claims 1, 3, and 5-10 as a group. Appeal Br. 6-11.
We select claim 1 as representative, with claims 3 and 5-10 standing or
falling with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). The Examiner relies on
Greenhut to teach an elongated leadless pacemaker having energy storage
(power source 102), electrodes 52, 60, and circuits (processor 90, memory
92, telemetry module 94, shock detector 99, activity sensor 100). Final Act.
2. The Examiner relies on Wahlstrand to teach circuits formed as island
sections, connected by a ribbon, and stacked in the housing in Figure 13. Id.
The Examiner determines that it would have been obvious to use the
stacked configuration of Wahlstrand in Greenhut for the "predictable result
of a more compact design, thus saving space inside the housing of the IMD."
Id. The Examiner determines that making stacked island sections transverse
to a length of an elongated housing is an obvious design choice because "the
circuit boards of Figure 13 of Wahlstrand can be made small enough to fit
transversely into Greenhut's elongated housing (Fig. 3) as "a simple matter
of scaling the size of the circuit boards to make it fit" so less space is used in
the housing. Id. The Examiner finds that parts of Wahlstrand's circuit board
160 and flex tape 162 would be transverse to the housing length. Ans. 2.
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Appellants argue that Figure 5 of Greenhut is a functional block
diagram that does not show or describe the actual physical layout of circuits,
components, or a "circuit board" and therefore provides no discussion of
how a non-disclosed circuit board would be disposed within Greenhut's
elongated leadless pacemaker. Appeal Br. 7-8. Appellants also argue that a
skilled artisan would understand the circuit board in Figure 13 of Wahlstrand
as configured to fit within housing 36 of control module 30 in Figure 12 in
an orientation that is parallel to the major dimension of the housing rather
than transverse to the major dimension (length) as claimed. Id. at 8-9.
These arguments are not persuasive for the following reasons. First,
claim 1 recites "a circuit" rather than a "circuit board" as Appellants argue.
Second, Greenhut teaches that the elements depicted in the functional block
diagram of Figure 5 correspond to circuits and electrical components. See
Greenhut ,r,r 105 (processor 90 is an application specific integrated circuit
(ASIC), multiple components, more ASICs, or other discrete or integrated
logic circuitry), 110 (signal generator 96 includes circuitry for measuring a
capture threshold), 112 (timing and control module of processor 90 may be a
hardware circuit, ASIC, or microprocessor). Third, the Examiner correctly
finds that Wahlstrand teaches circuit board 160 having separate islands with
electrical components thereon. Final Act. 2 (citing Wahlstrand, Fig. 13).
We agree with Appellants that Figure 13 of Wahlstrand does not teach
a transverse orientation of circuit board 160 relative to a housing as claimed.
However, the Examiner relies on Wahlstrand's teaching of stacked islands
and reasons that the orientation of those islands relative to a housing would
be an obvious design choice within the level of ordinary skill in the art for
predictable results of using less space in the housing. Ans. 2; Final Act. 2.
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Appellants ascribe no criticality to the claimed transverse orientation
of the circuit islands. In their Reply Brief, Appellants argue that a stacked,
transverse arrangement consumes less space within the housing. Reply Br.
2-3. However, such space savings are dependent on the relative shapes and
dimensions of the circuit islands and housing, neither of which is claimed.
In the Specification, Appellants disclose a desire to reduce the volume
used for electrical circuits to enhance the volume used for an energy storage
device (battery). Spec. ,r 3. The Specification discloses ways to achieve this
reduction by stacking the circuits, using a common substrate for islands and
ribbon sections, flexible circuits, three islands, filling a transverse area of a
housing at least 80% or 90% with circuits, and alternatively or additionally,
orienting major surfaces of island sections transverse to a length dimension
of the housing. Id. ,r,r 4--33. The Specification also discloses that a stacked,
transverse orientation of circuit islands may consume 5% to 50% of the total
height 514 of an implantable medical device 14. Id. ,r 95, Fig. 7. The height
consumed by energy storage device 502 ranges from 50% to 95% of the total
height 514 ofIMD 500. Id.
Appellants also argue that the Examiner has not established that the
circuit boards of Figure 13 of Wahlstrand can be made small enough to fit
transversely into the elongated housing in Figure 3 of Greenhut. Appeal Br.
9. Appellants argue that the Examiner provides no basis for asserting that a
skilled artisan would have been motivated to configure Wahlstrand's circuit
boards to fit transversely into the elongated housing in Figure 3 of Greenhut.
Id. Appellants argue that even if Wahlstrand teaches that the substrate and
circuit board are made from flex tape, the circuit board would be placed in
parallel to the length of the elongate shape, not transverse. Id. at 10.
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Appellants' arguments are not persuasive for the following reasons.
First, Wahlstrand teaches to form circuit board 160 in sections (islands) and
stack the sections along major opposed surfaces to permit circuit board 160
to be inserted into a smaller, cylindrical housing 3 6. W ahlstrand ,r 91. The
Examiner reasons correctly that this teaching provides motivation to form a
circuit board in multiple, smaller sections, as desired, to fit efficiently into a
volume of an IMD housing. Ans. 2; Final Act. 2. Recognizing that skilled
artisans are persons of ordinary creativity, the Examiner reasons that they
would be motivated and able to size circuit boards to fit economically within
a particular housing to use space therein more efficiently. Ans. 2-3. These
findings and reasoning are consistent with W ahlstrand' s teachings that
The size and shape of an IMD housing is dependent on the
sizes and shapes of the components of the IMD. Large
components common to most IMDs include a battery, a
telemetry coil, and a circuit board that carries digital circuits,
e.g., integrated circuit chips and/or a microprocessor, and
analog circuit components. Attempts have been made to reduce
the size of the IMD housing by reducing the size of these
components, changing the shape of these components, and
organizing these components within the IMD housing to avoid
empty space within the housing. Despite these efforts to reduce
the size of IMD housings, the size, shape and rigidity of IMD
housings still greatly limits the locations within the human body
where an IMD can be practically implanted.
W ahlstrand ,r 19. W ahlstrand thus teaches to reduce the size and change the
shape of components and organize these components within an IMD housing
to avoid empty space in the housing and thereby reduce the size of the IMD
housing. Id. These teachings also support the Examiner's reasoning that the
transverse orientation of circuit islands is an obvious design choice where
Appellants do not establish its criticality as compared to the closest prior art.
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A skilled artisan would be confronted with finite options when placing
stacked circuit islands inside an IMD housing. The circuit islands could be
oriented parallel or transverse to a length of the housing. The orientation is a
design choice because it does not affect the functioning of the IMD or the
circuit. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367
(Fed. Cir. 2016) (explaining that where the prior art located two sensors in
the shredder's feed, a skilled artisan was left with two design choices: (1) to
place the thickness sensor above the presence sensor in the feed or (2) to
place the thickness sensor below the presence sensor, and either design
choice is an obvious combination of prior art elements) ( citing KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,421 (2007) ("When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense."); In re Conte, 36 F. App'x 446,451 (Fed.
Cir. 2002) (non-precedential) (holding that the difference between prior art's
upward-opening slot and claimed downward-opening slot was insignificant
design choice because both types of slots would retain the rubber band on
the front of the gun barrel).
Any space-saving advantage of a transverse orientation depends on
the shape, size, volume, and number of circuit islands compared to the shape
and size (including cross-sectional shape and size) and volume of an IMD
housing as well as the shapes, sizes, and volumes of other components in the
housing. See Wahlstrand ,r 19. None of these variables is recited in claim 1.
Any purported advantages are not commensurate with the scope of claim 1.
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Nor do Appellants address the Examiner's determination that the
orientation of the stacked islands is an obvious design choice that lacks
criticality. Appellants do not argue or show that Greenhut's IMD would
operate any differently when the circuits were stacked parallel rather than
transverse to the length of the IMD housing. Thus, the Examiner had a
sound basis for treating this feature as an obvious design choice. See In re
Kuhle, 526 F.2d 553,555 (CCPA 1975) (holding that the placement of an
electrical contact was an obvious design choice because it operated in well-
known manner with no novel or unexpected result); cf In re Gal, 980 F .2d
717, 719-20 (Fed. Cir. 1992) (holding that a custom chip design was not an
obvious design choice as it functioned differently than the prior art design).
Even if Wahlstrand is understood to teach a parallel orientation (see
Appeal Br. 9-10; Reply Br. 5---6), the Examiner modifies Greenhut's IMD
housing, which positions power source 102 and electrical components in the
same housing (Figs. 3, 5), not separate housings 36, 38 as in Wahlstrand.
Thus, we sustain the rejection of claims 1, 3, and 5-10.
Claim 2
Claim 2 depends from claim 1 and recites "wherein the two or more
island sections and the ribbon section have a common substrate." Claims
App. 2. 3 The Examiner finds that Wahlstrand teaches to make the entire
circuit board 160 from flex tape, which forms a common substrate. Final
Act. 2. Appellants argue that flex tape may form a common portion, but
there is no teaching of electrically connecting island sections with a ribbon
section that is part of the circuit board as claimed. Appeal Br. 11.
3 All citations to the claims are taken from the Supplemental Appeal Brief,
filed Nov. 14, 2017, as the Response to the Non-Compliant Appeal Brief.
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Appellants' arguments are not persuasive primarily because they are
not commensurate with the scope of claim 2, which does not recite a circuit
board or island sections connected with a ribbon section that is part of the
circuit board as Appellants assert. Claim 2 requires the two or more island
sections and ribbon section to have a common substrate. The Examiner
correctly finds that Wahlstrand teaches a circuit board comprising sections
connected by flex tape regions 162 (Fig. 13) and also teaches that circuit
board 160 may be constructed entirely of flex tape. Wahlstrand ,r 91. We
find that forming circuit board 160 and flex tape region 162 entirely of flex
tape would create a circuit board having a common substrate, i.e., flex tape.
See Ans. 3. Appellants' arguments recognize that the flex tape may provide
a common portion but do not explain why this common portion is not also a
common substrate as claimed. Indeed, the Specification discloses that the
circuit and ribbon sections may comprise a flexible circuit that may include
a flexible substrate with two or more islands and one or more ribbon sections
electrically connected thereto. See Spec. ,r,r 6, 8, 17, 19, 31, and 39. Thus,
we sustain the rejection of claim 2.
Claim 4
Claim 4 depends from claim 1 and recites "wherein the two or more
island sections are circular and comprise printed circuit boards." Claims
App. 2. The Examiner finds that printed circuit boards are well known in
the art as evidenced by Aghassian (para. 6) and obvious to use. Final Act. 3.
The Examiner also finds that the circular shape is an obvious design choice
yielding predictable results. Id. The Examiner finds that paragraph 36 of
Chiao (US 2016/0220814 Al, pub. Aug. 4, 2016) teaches to make circuit
boards in different shapes including circular shapes. Ans. 3.
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Appellants argue that it is not appropriate to assert that the circular
shape is a mere design choice because a skilled artisan would have no reason
to make a printed circuit board circular and making a printed circuit board
circular would serve no purpose in the devices of Wahlstrand or Greenhut.
Appeal Br. 11. Appellants argue that there is no suggestion to place circuit
boards transverse to a longitudinal axis of the housing so there would be no
purpose in shaping the printed circuit boards as claimed. Id.
Appellants' arguments are not persuasive for the following reasons.
First, Appellants' arguments do not address the Examiner's determination
that a circular shape for a circuit board is an obvious design choice and thus
do not apprise us of Examiner error in this regard. Second, Appellants do
not argue any criticality or different functionality for the circular shape. The
Specification discloses that island sections 202, 204 may be circular in shape
in some examples, "but this is not required." Spec. ,r 75. The Specification
discloses that, in other examples, islands 202, 204 may be triangular, square,
ovular, or any other suitable shape. Id. The Specification discloses other
examples in which the shape of island sections 202, 204 may match a cross
section shape of an implantable medical device. Id. Thus, the Examiner had
a sound basis to conclude that the circular shape of the printed circuit board
is an obvious design choice. Furthermore, the Examiner relied on Chiao to
teach that circuit boards can have a variety of different shapes to include
circular shapes and using/substituting circular circuit boards for the circuit
boards of the IMD of the modified Greenhut would yield predictable results
over other circuit board shapes. Ans. 3. As discussed above, Wahlstrand
teaches to vary the shapes of IMD components. Wahlstrand ,r 19.
Thus, we sustain the rejection of claim 4.
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Application 14/953,987
Claims 19 and 20
Unpatentable Over Wahlstrand.
Independent claim 19 recites a flexible circuit with a flexible substrate
comprising two or more circular island sections electrically connected by a
ribbon section on a common substrate with the island sections. Claims App.
5. An application specific integrated circuit (ASIC) is mounted on one
island section, and each ribbon section can bend to position the island
sections in a parallel, stacked relationship transverse to a length dimension
of an elongated device housing. Id. The Examiner relies on Wahlstrand to
teach these features. Final Act. 3.
The Examiner determines that it would have been an obvious design
choice yielding predictable results to make the island sections of Wahlstrand
a circular shape. Id. The Examiner also determines it would have been an
obvious design choice to position the stacked island sections transverse to a
length of an elongated housing because the circuit boards can be made small
enough to fit transversely into the elongated housing shown in Figure 12. Id.
The Examiner further determines that it would have been obvious to size the
circuit boards to fit and additionally finds that, by making the circuit boards
fit transversely, less space would be taken up in the housing of the IMD. Id.
Appellants argue the Examiner cites no support for the finding that the
circuit boards of Figure 13 can be made small enough to fit transversely into
the elongated housing of Figure 12. Appeal Br. 12. Appellants also argue
that Wahlstrand does not describe a flexible circuit with island sections that
are planar with a circular shape, nor does Wahlstrand describe the stacked
island sections as being positioned transverse to a length dimension of an
elongated cylindrical device housing. Id.
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Appellants' arguments are not persuasive for the following reasons.
First, the Examiner's findings that Wahlstrand's circuit boards can be sized
small enough to fit transversely in a housing are supported by the teachings
of W ahlstrand. As discussed above, Wahlstrand teaches to size circuit board
160 into two smaller islands. Wahlstrand ,r 91, Fig. 13. Wahlstrand teaches
generally that IMD components are sized smaller, shaped, and organized to
fit within IMD housings to avoid empty spaces. Id. ,r 19.
Second, the Examiner determines that a circular shape and transverse
orientation of circuit islands are obvious design choices. We agree with this
determination for the reasons discussed for claims 1 and 4. Appellants have
not demonstrated any criticality or different functionality for these features
to preclude their treatment as design choices. Instead, as discussed above,
the Specifications discloses these features among many different ways to
configure the circuits depending on the IMD housing and other components
to achieve the same functions. Thus, we sustain the rejection of claim 19.
Claim 20
Claim 20 depends from claim 19 and recites that the flexible circuit
further comprises "one or more electrical components mounted on another
one of the island sections that does not have the ASIC." Claims App. 5.
The Examiner finds that a skilled artisan would understand that such
placement of the circuit components is a design choice yielding predictable
results. Ans. 4. The Examiner also finds that the Specification provides no
disclosure that the claimed placement yields unexpected or important
advantages unknown in the art. Id. The Examiner further finds that Figure
13 of Wahlstrand shows island sections connected by a ribbon section where
any type of circuitry could be placed on the island sections. Id.
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Appellants argue that Wahlstrand may mention an ASIC but does not
teach a flexible circuit with other electrical components mounted on another
island section. Appeal Br. 13. Appellants argue that the cited art does not
teach a flexible circuit with "one or more electrical components mounted on
another of the island sections that does not have the ASIC." Id.
The Examiner has the better position in view of Wahlstrand's teaching
of circuit board 160 comprising separate islands with different components
mounted thereon. Wahlstrand ,r 91, Fig. 13; Ans. 4. Wahlstrand teaches that
control module 30 in housing 36 includes processor 60, which may be an
ASIC, microprocessor, digital signal processor, or other logic circuitry.
Wahlstrand ,r 74. Wahlstrand teaches that control module 30 comprises
other components and circuits. Id. ,r,r 75-78. The Examiner reasonably
finds that the components are spread among the two islands illustrated in
Figure 13 such that an ASIC is positioned on one of the two islands and
other electrical components are positioned on the other of the two island
sections as claimed. Ans. 4. Thus, we sustain the rejection of claim 20.
Claims 11-17
Unpatentable Over Greenhut, Wahlstrand, and Swanson
Independent claim 11 recites an implantable medical device (IMD)
comprising an elongated housing having a major and minor dimension, two
or more electrodes, an energy storage device with a feedthrough extending
away from the energy storage device along the major dimension of the
elongated housing, and a flexible circuit and substrate in two or more island
sections with opposing major surfaces that extend transverse to the major
dimension of the elongated housing when the island sections are stacked in
the housing. Claims App. 3.
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The Examiner relies on Greenhut and W ahlstrand to teach features of
claim 11 that are the same as or similar to those recited in claims 1 and 19
and Swanson to teach a feedthrough 408 that connects a battery 402 and
circuit elements 404 in Figure la. Final Act. 4; Ans. 4. The Examiner finds
that Swanson's feedthrough 408 extends along a major axis of the housing in
Figure la, and it would extend along the major axis of the elongated housing
of Greenhut. Final Act. 4. The Examiner determines that it would have
been obvious to use Swanson's feedthrough to connect circuits of Greenhut
to the battery along a major axis of the housing "since it would yield
predictable results, and result in a more compact design." Id.
Appellants argue that Swanson does not remedy the shortcomings of
Greenhut and Wahlstrand regarding the orientation of a stack circuit board.
Appeal Br. 14. Appellants also argue that there is no teaching in Wahlstrand
to orient the circuit boards transversely. Id. This latter argument is not
persuasive because the orientation of the circuit island sections is an obvious
design choice for the reasons discussed above for the rejection of claim 1.
Thus, there are no deficiencies in Greenhut and Wahlstrand for Swanson to
cure in this regard. Accordingly, we sustain the rejection of claim 11.
Claim 12
Claim 12 depends from claim 11 and recites 'wherein each ribbon
section is more flexible than the island sections." Claims App. 4. The
Examiner finds that Wahlstrand illustrates this feature as flex tape or ribbons
162 in the embodiments of paragraph 91. Ans. 4--5.
Appellants argue that the Examiner fails to point to any teaching of
the references of this claimed feature and instead relies on design choice.
Appeal Br. 14--15.
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The Examiner has the better position in view of Wahlstrand's teaching
of circuit board 160 comprising two island sections connected by flex tape
162. Wahlstrand ,r 91, Fig. 13. The Examiner correctly finds that flex tape
162 is more flexible than the two island sections in embodiments where the
two island sections are not also formed of flex tape. Ans. 4--5. As shown in
Figure 13, flex tape section 162 is flexible enough to be bent into a C-shape
to connect the circuit board sections, which are shown as planar, rigid island
sections. Thus we sustain the rejection of claim 12.
Claim 13
Claim 13 depends from claim 11 and recites "wherein the flexible
circuit comprises three island sections." Claims App. 4. The Examiner
finds that having a third island section connected to other island sections by
a ribbon section would merely be duplicative of what is already taught in
Wahlstrand, Figure 13 for two island sections. Ans. 5. The Examiner also
finds that a third section would not yield unpredictable results but would be
a reasonable thing to do if all of the circuitry did not fit on just two island
sections. Id.
Appellants argue that the Examiner fails to identify any disclosure in
the prior art and instead appears to rely on obvious design choice whenever a
claimed feature is not found in the prior art. Appeal Br. 15-16. Appellants
argue that a specific structure is claimed that allows a more compact design
as disclosed in the Specification. Id. at 16.
The Examiner's reasoning is supported by a rational underpinning in
that circuitry that does not fit within a housing when placed on two islands
would be able to fit within a housing when formed into three smaller island
sections that fit more easily within a housing section. Ans. 5.
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As discussed above, Wahlstrand provides a rational underpinning for
this reasoning because it teaches to form circuit 160 as multiple islands and
it teaches to reduce the size and shape or circuits and other components and
group them to fit inside IMD housings with less wasted space. Wahlstrand
,r,r 19, 91, Fig. 13. The Examiner reasonably concludes that a skilled artisan
would have been motivated to form a circuit board into three smaller island
sections if two island sections did not fit within an IMD housing. Ans. 5.
Thus, we sustain the rejection of claim 13.
Claims 14 and 15
Claims 14 and 15 depend from claim 13 and require respectively that
the first island section is positioned between the second and third island
sections, or that the second island section is positioned between the first and
third island sections. Claims App. 4. The Examiner finds that neither
feature provides a more compact design as Appellants argue to be the case
but instead yield the same compact design with three islands. Ans. 5.
Appellants argue that the Examiner has not cited any disclosure in the
prior art as teaching this feature and instead relies on obvious design choice.
Appeal Br. 1 7. Appellant argues that these claimed arrangements are more
than just shifting parts around and instead allow a more compact design as
disclosed in the Specification. Id.
The Examiner has the better position in view of the lack of criticality
or different functionality argued or ascribed to these features. There is no
indication in the Specification nor any argument by Appellants that island
sections function differently when stacked in different orders as claimed.
Thus, we sustain the rejection of claims 14 and 15.
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Claim 18
Unpatentable Over Greenhut, Wahlstrand, Swanson, and Maghribi
Claim 18 depends from claim 11 and recites "wherein each ribbon
section comprises a metal portion bonded between two polymer portions,
and each of the island sections comprises a first metal portion bonded
between two polymer portions, and second metal portions bonded to the two
polymer portions." Claims App. 4. The Examiner relies on Maghribi to
teach a ribbon with metal traces bonded between two polymer portions and
Wahlstrand to teach a flex tape. Final Act. 4--5; Ans. 5---6. The Examiner
reasons that each flex tape island of W ahlstrand could be made as taught in
Maghribi with metal traces bonded between polymers. Ans. 5---6.
Appellants argue that the Examiner has not explained where the prior art
also teaches "second metal portions bonded to the two polymer portions" as
claimed. Appeal Br. 19. We agree. Accordingly, we do not sustain the
rejection of claim 18.
DECISION
We affirm the rejections of claims 1-17, 19, and 20 and we reverse
the rejection of claim 18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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