Ex Parte Peters et al

Patent Trial and Appeal Board

Mar 7, 2017

12847830 (P.T.A.B. Mar. 7, 2017)

United States Patent and Trademark Office
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.
12/847,830 07/30/2010 Charles E. Peters P0034732.01/LG10137.L33 4696
27581 7590 03/09/2017
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
HELLER, TAMMIE K
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
03/09/2017 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):
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. PETERS, STEVEN T. DEININGER, and
MICHAEL J. BAADE
Appeal 2015-005470
Application 12/847,830
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles E. Peters et al. (Appellants)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection2 of claims 19—28 under 35 U.S.C. § 102(b)
as anticipated by either Rusin (US 2006/0015150 Al, pub. Jan. 19, 2006); or
Lee (US 6,083,640, iss. July 4,2000); and of claims 29 and 30 under 35 U.S.C.
1 According to Appellants, the real party in interest is Medtronic, Inc.
Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Action, dated October 31, 2013 (“Final Act.”)
Appeal 2015-005470
Application 12/847,830
§ 103(a) as unpatentable over either Rusin or Lee.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 19, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
19. An implantable medical device, comprising:
an enclosure that has a geometry that is machined
from biocompatible material;
circuitry within the enclosure; and
a connector block module fixed to a top of the
enclosure.
ANALYSIS
Anticipation of Claims 19—28 by Rusin
Claims 19—23
Appellants argue claims 19—23 together in contesting the rejection of
these claims as anticipated by Rusin. See Appeal Br. 6—8; Reply Br. 2—3.
We select claim 19 as the representative claim for this group, and the
remaining claims stand or fall with claim 19. See 37 C.F.R. 41.37(c)(l)(iv).
Appellants present arguments under separate headings for claims 24—28
(Appeal Br. 8), which we address infra.
3 Claims 1—18 have been canceled. Appeal Br. 3. The Examiner withdrew
the rejection of claims 29 and 30 under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Ans. 2
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Application 12/847,830
The Examiner finds that Rusin anticipates claim 19 by disclosing “an
implantable medical device comprising [an] enclosure 18 that has a
geometry that is machined from biocompatible material; circuitry 28/30
within the enclosure; and a connector block 10 module fixed to a top of the
enclosure. Final Act. 4 (citing Rusin, Figures 1—3). The Examiner also
explains that “[a]n ‘enclosure that has a geometry that is machined from
biocompatible material’ is satisfied by [any] enclosure comprising a
biocompatible material because ‘machined from’ does not change the
structure,” and invites Appellants to explain “how the present invention
differs structurally from that of the prior art and how the language
‘machined from’ suggests such a structural difference.” Id. at 7.
Appellants first contend that Rusin is “silent as to how an enclosure is
manufactured,” so that “to the extent ‘machined from’ is a structural
limitation,. . . the absence of the disclosure of machining the enclosure in
Rusin requires a conclusion that Rusin does not anticipate claims 19—28.”
Appeal Br. 7. Appellants also argue that “[a]n enclosure machined from a
biocompatible material is a different structure than an enclosure
manufactured by stamping,” because “[stamping affects the material
differently than machining and therefore a different structure results.” Id. at
8; see also Reply Br. 2—3.
In response, the Examiner explains that “[t]he limitation ‘an enclosure
that has a geometry that is [machined] from biocompatible material’ is
considered a product-by-process limitation and the process by which the
enclosure is machined fails to further define the structure of the enclosure
itself.” Ans. 7. As we are instructed by our reviewing court, where the
Examiner establishes a reasonable basis to believe that the prior art product
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Application 12/847,830
is substantially similar to that which would result from “an enclosure that
has a geometry that is machined from,” the burden shifts to Appellants to
prove that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. In re Thorpe, 111 F.2d 695, 698
(Fed. Cir. 1985); see also In re Fessman, 489 F.2d. 742, 745 (CCPA 1974);
MPEP § 2113. The Examiner explains that Appellants have “failed to point
to the difference in the claimed structure and the structure of the prior art.”
Ans. 8. We agree, noting that “[attorney’s arguments in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(citation omitted); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (holding that lawyer arguments and conclusory statements which are
unsupported by factual evidence are entitled to little probative value).
Based on the foregoing, we sustain the Examiner’s rejection of claims
19—23 as anticipated by Rusin.
Claims 24—28
Appellants contend that claims 24—28 recite “ways the enclosure is
machined including electric discharge machining and milling,” and that
“Rusin fails to disclose these specific forms of machining,” even though
“machining such as by each of these forms produces a different structure
than one formed by the conventional manufacturing of stamping of
enclosures for medical devices.” Appeal Br. 8. Appellants continue by
contending that “electric discharge machined and milled are structural
limitations pursuant to MPEP 2113 and Rusin fails to disclose such
structural limitations.” Id.
In response, the Examiner points out that “these recitations are not
considered to further limit the claimed invention over the prior art because
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Application 12/847,830
such recitations are considered product-by-process recitations,” and reasons
that Appellants have “failed to come forth with a showing of an unobvious
difference or distinct structural difference between the product of the
claimed invention and that of the prior art of record.” Ans. 8. Appellants
have not apprised us of any error in the Examiner’s findings or conclusions,
and we find none.
Based on the foregoing, we also sustain the Examiner’s rejection of
claims 24—28 as anticipated by Rusin.
Anticipation of Claims 19—28 by Lee
We have affirmed the rejection of claims 19—28 under 35 U.S.C.
§ 102(b) as anticipated by Rusin. Consequently, we find it unnecessary to
reach a decision about the cumulative rejection of claims 19—28 under 35
U.S.C. § 102(b) as anticipated by Lee. See 37 C.F.R. § 41.50(a)(1) (“The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.”).
Obviousness of Claims 29 and 30 over Rusin
Regarding claims 29 and 30, the Examiner determines that “Rusin
discloses the invention substantially as claimed, but fails to disclose that the
material when annealed has a hardness of annealed grade five titanium or
harder, or wherein the material is annealed titanium of grade five or harder.”
Final Act. 6—7. However, the Examiner reasons that it would have been
obvious “to modify the invention of Rusin such that the material of the
enclosure is annealed titanium of grade five or harder, since it has been held
to be within the general skill of a worker in the art to select a known material
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on the basis of its suitability for the intended use as a matter of obvious
design choice.” Id. (citation omitted).
Appellants repeat the prior contention that Rusin “does not disclose
that the enclosure is machined from a material and there is no motivation of
one of ordinary skill in the art to pursue a machining of an enclosure that
appears to be a conventional enclosure where stamping would be effective,”
and that “it is not within the skill of the ordinary worker in the art to choose
a material that is significantly harder than what is presumably in the
reference when the reference provides no reason to choose the harder
material and provides no method of manufacturing the enclosure from the
harder material.” Appeal Br. 9.
In response, the Examiner explains “it is within the general skill of a
worker in the art to select a known material on the basis of its suitability for
the intended use as a matter of obvious design choice,” and that “[o]ne of
ordinary skill in the art would reasonably be expected to be able to choose a
material appropriate for its intended use in a product.” Ans. 10.
Appellants take issue with the Examiner’s explanation, contending
that “[t]he material of the hardness specified in claims 29 and 30 is not
suitable for stamping,” and because Rusin does not “disclose a similar
material of such hardness nor an enclosure with a machined construction that
could be used for a material of such hardness, [that] one of ordinary skill in
the art would not seek such a material to substitute for the enclosure of. . .
Rusin.” Reply Br. 4. From the foregoing, Appellants argue that “it is not
merely a matter of design choice for the worker of ordinary skill to replace a
disclosed material with another material that requires an entirely different
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Application 12/847,830
manner of construction, especially when there is no reason to replace the
disclosed material in the first place.” Id.
However, Appellants have provided no evidence that the hardness of
the enclosure material would lead to a different function or unexpected
result. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed
feature solves no stated problem and presents no unexpected result and
“would be an obvious matter of design choice within the skill of the art”
(citations omitted); see also In re Chu, 66 F.3d 292, 298—99 (Fed. Cir.
1995) (“design choice” is appropriate where the applicant fails to set forth
any reason why the differences between the claimed invention and the prior
art would result in a different function). Thus, we agree with the Examiner
that “[o]ne of ordinary skill in the art would reasonably be expected to be
able to choose a material appropriate for its intended use in a product.” Ans.
10.
Obviousness of Claims 29 and 30 over Lee
We have affirmed the rejection of claims 29 and 30 under 35 U.S.C.
§ 103(a) as obvious over Rusin. Consequently, we find it unnecessary to
reach a decision about the cumulative rejection of claims 29 and 30 under 35
U.S.C. § 103(a) as obvious over Lee. See 37 C.F.R. § 41.50(a)(1) (“The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.”).
DECISION
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We AFFIRM the Examiner’s rejections of claims 19—30 over Rusin.
We do not reach the additional issues raised by Appellants regarding the
cumulative rejections of claims 19—30 over Lee.
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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