Ex Parte Phillips et al

Patent Trial and Appeal Board

Jun 25, 2014

12392842 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WILLIAM C. PHILLIPS,
MARK C. SCHOMMER, and ANDREW L. SCHMELING
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Appeal 2012-005744
Application 12/392,842
Technology Center 3700
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Before: JOHN C. KERINS, JAMES P. CALVE, and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William C. Phillips et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1 and 3–18. App. Br. 5. Claim
2 is cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2012-005744
Application 12/392,842

2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to an external transcutaneous energy
transfer system for an implantable medical device. Claims 1 and 11 are
independent. Claim 1 is illustrative, and is reproduced below.
1. An external power system for transcutaneous
energy transfer to an implantable medical device
having componentry for providing a therapeutic
output and a secondary coil operatively coupled to
said componentry, said medical device adapted to
be implanted at a location in a patient, comprising:
an external power source having a primary coil
contained in a housing;
said external power source capable of providing
energy to said implantable medical device when
said primary coil of said external power source is
placed in proximity of said secondary coil of said
implantable medical device; and
a holder adapted to be externally positioned with
respect to said patient at a spot in proximity of said
location of said implantable medical device and
secured at said location, said housing being
removably coupled to said holder; and
a plurality of spacers, each separately removably
coupled to at least one of said holder and another
of said plurality of spacers, each having an
opening receiving at least a portion of a cutaneous
protrusion formed at said location at which said
implantable medical device is implanted, said
plurality of spacers being stacked with said
opening of each of said plurality of spacers being
aligned with said opening of each of the other of
said plurality of spacers.

Appeal 2012-005744
Application 12/392,842

3
THE REJECTIONS
Claims 1 and 3–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mann (US 5,545,191, issued Aug. 13, 1996), in view of
Whisler (US 5,058,592, issued Oct. 22, 1991).
ANALYSIS
Claims 1 and 3–18 as unpatentable over Mann in view of Whisler
The Examiner finds that Mann discloses an external power system
including all limitations of claim 1 with the exception of a plurality of the
spacers. Ans. 4; 5–6. The Examiner initially relies on Whisler as supplying
an explicit teaching of such a plurality of spacers, 1–4, with a housing. Id. at
4, citing Whisler, Fig. 4. The Examiner concludes that modifying the Mann
housing, e.g., 22, and single spacer, e.g., 24, with Whisler’s housing and
plurality of spacers predictably results in allowing variable positioning to
more effectively transmit energy and/or align properly. Id.
Appellants challenge the Examiner’s position, arguing that the
elements in Whisler regarded by the Examiner to be a plurality of spacers
are in actuality a unitary ring segment composed of laminated rings, and are
not separable from at least one of the holder and another of the spacers as
required by the claim. App. Br. 13–14. The Examiner countered that, as the
contested claim language “removably coupled” is vague and such rings
could separate upon application of a sufficient de-laminating force,
Whisler’s plurality of spacers are also “removably coupled.” Ans. 6.
Appellants maintain that such interpretation amounts to destruction of the
unitary ring segment into rings which is neither taught nor obvious in view
of the teachings of Whisler. Reply Br. 6.
Appeal 2012-005744
Application 12/392,842

4
The Examiner’s interpretation of the terminology “removably
coupled” to include destructive forces as well as forces encountered during
normal operating conditions is unreasonable in light of the ordinary meaning
of the word “removably,” which usage is consistent with the description in
the Specification of complementary components as “easy mating.”1 As
such, the Examiner has not established that the proposed combination would
predictably result in a device having a plurality of spacers each separately
removably coupled to at least one of said holder and another of said plurality
of spacers.2
Thus, the rejection of claim 1 is not sustained. Claims 3–10 depend
from claim 1 and the rejection is also not sustained as to these claims.
Claim 11 is drawn to mounting kit for an external power system also
including a plurality of spacers as claimed in claim 1, discussed supra. As
such, the rejection of claim 11, as being unpatentable over Mann and
Whisler is also not sustained. Claims 12–18 depend from claim 11 and the
rejection is also not sustained as to these claims.

1 See, e.g., Spec., paras. 126–127 and 129–131.
2 The Examiner took an additional position that, since a cutaneous
protrusion was not positively recited, the prior art need only teach that the
opening of each spacer possesses the capability of receiving a protrusion of
any size and that both Mann and Whisler have such capability since each
taught a spacer/spacers possessing a generally oval central opening. Ans. 4–
5; 6. The Examiner also has not established by a preponderance of the
evidence that either the Mann or Whisler spacer(s) possess the capability of
receiving anything other than a housing in order to function as desired. See,
e.g., Mann, col. 4, ll. 42–44; Whisler, col. 3, ll. 37–40, claim 5.
Appeal 2012-005744
Application 12/392,842

5
DECISION
We reverse the Examiner’s rejection of claims 1 and 3–18.

REVERSED

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