Ex Parte Risi et al

Patent Trial and Appeal Board

Nov 7, 2018

14744951 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/744,951 06/19/2015
110239 7590 11/09/2018
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd., Suite 750
Gaithersburg, MD 20878
FIRST NAMED INVENTOR
Frank Risi
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.
3065.0409C0N/CID01421USCT 7422
EXAMINER
FAIRCHILD, MALLIKA DIPAYAN
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK RISI, COLIN IR WIN,
JAY T. RUBINSTEIN, FELIPE SANTOS, and
JAMES 0. PHILIPS
Appeal2017-010453
Application 14/7 44,951
Technology Center 3700
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134 involving claims to a
vestibular stimulation device. The Examiner rejected the claims as
indefinite and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the Real Parties in Interest as Cochlear Limited and
University of Washington Center for Commercialization (see App. Br. 3).
2 We have considered and herein refer to the Specification of Oct. 1, 2015
("Spec."); Final Office Action of Aug. 30, 2016 ("Final Act."); Appeal Brief
of Apr. 5, 2017 ("App. Br."); Examiner's Answer of June 2, 2017 ("Ans.");
and Reply Brief of Aug. 2, 2017 ("Reply Br.").
Appeal2017-010453
Application 14/744,951
Statement of the Case
Background
The vestibular system "is a portion of the inner ear which enables the
sensation of angular and linear motion" and "includes the three semicircular
canals" (Spec 1:7-12). Abnormalities of the vestibular system, such as
Meniere' s disease, "can result in significant disability" (Spec. 1: 12-17). The
prior art proposes to treat vestibular disease by "provid[ing] a vestibular
stimulator using electrical stimulation" (Spec. 1 :29-33). A known vestibular
stimulation device uses "electrodes placed externally, or implanted neural
stimulation electrodes" (id.). The Specification teaches "an electrode array
suitable for implantation within one or more semicircular canals of a user, so
as to facilitate vestibular stimulation" (Spec. 2: 1-3).
The Claims
Claims 20-42 are on appeal. Independent claim 20 is representative
and reads as follows:
20. A vestibular system stimulation array, comprising:
at least one electrode array configured to be implanted in
a semicircular canal of the vestibular system, and further
configured to apply electrical stimulation to the vestibular
system while implanted in the semicircular canal, wherein the at
least one electrode array is dimensioned such that residual
vestibular function of the semicircular canal in which the at
least one electrode array is implanted is retained, and wherein
the electrode array comprises a stiffener embedded in the
electrode array.
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The Issues 3
A. The Examiner rejected claims 22, 25, 26, 28, 34, 35, 38, 41, and 42
under 35 U.S.C. § 112(pre-AIA), second paragraph, as indefinite (Final Act.
8-10).
B. The Examiner rejected claims 20-39, 41, and 42 under 35 U.S.C.
§ I03(a) as obvious over Della Santina,4 Gantz, 5 and Zhulati6 or Thenuwara7
(Final Act. 10-19).
C. The Examiner rejected claim 40 under 35 U.S.C. § I03(a) as obvious
over Della Santina, Gantz, and Zhulati or Thenuwara, further in view of
Kuzma 8 (Final Act. 19-20).
A. 35 US.C. § 112(pre-AIA), second paragraph
The Examiner finds several claim terms are not defined in the
originally filed Specifications and thus indefinite (Final Act. 8-9). We will
address these findings together.
The Examiner finds claims 22, 28, and 35 are indefinite because "the
term 'substantially' makes the limitation[ s] 'does not substantially compress
3 Because the Examiner, in the Advisory Action mailed Mar. 6, 2017,
entered Appellants' After-Final amendment filed Feb. 24, 2017 that
amended claim 37 to address the 35 U.S.C. § 112(pre-AIA), second
paragraph rejection, and the Examiner does not restate this rejection in the
Answer, we treat this rejection as withdrawn by the Examiner.
4 Della Santina et al., US 7,225,028 B2, issued on May 29, 2007.
5 Gantz, US 2008/0312717 Al, published on Dec. 18, 2008.
6 Zhulati et al., US 8,532,788 B2, issued on Sept. 10, 2013.
7 The Examiner applied Thenuwara et al., US 2011/0295352, published on
Dec. 1, 2011, as an alternative to Zhulati. Since the references are cited in
the alternative, we choose to address only Zhulati in our decision.
8 Kuzma, US 5,545,219, issued on Aug. 13, 1996.
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the membranous labyrinth' and 'the membranous labyrinth remains
substantially uncompressed' unclear" (Final Act. 8-9).
The Examiner also finds claims 25, 26, 34, 38, 39, and 41 indefinite
because the term "about," makes the dimensions of the claimed electrode
array unclear (Final Act. 9).
The Examiner also finds claims 41 and 42 indefinite because the term
"substantially," makes "substantially an entire length," unclear (id.).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's position that claims 22, 25, 26, 28, 34, 35, 38, 41,
and 42 are indefinite?
Findings of Fact
1. The Specification teaches:
It is desirable that the array have sufficient stiffness and
dynamics such that the electrode can be placed reliably within
the labyrinth. The electrode array according to this
implementation incorporates a stiffening member with unique
characteristics, allowing the electrode array to be of the
required diameter, yet of sufficient stiffness to insert to the
desired depth between the bony labyrinth and the membranous
labyrinth of each semicircular canal. The array should have a
stiffness allowing a signal stroke atraumatic insertion to the
required depth in the canal. On the other hand, it must also
have sufficient flexibility to deflect and avoid damage to the
delicate anatomical structures. If the array is too stiff, it would
be more prone to pierce or compress the delicate anatomical
structures: if it is too soft or flexible, the electrode array may
buckle and deform during insertion, and thereby cause trauma.
(Spec. 10:26-11:4).
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2. Figure 4 of the Specification is reproduced, in part, below:
f:.\ ........................... .,
g ......... ,,
.32 33:
......... ,, ... , .. ,·,·
Figure 4 illustrates a detailed view of the electrode array with several
dimensions, including length of the array A, electrode span B, diameter of
insertion part F, and embedded stiffener 34 (Spec. 11:3-13).
Principles of Law
"[C]laims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014 ). "[T]his requirement is not a demand for unreasonable precision. The
requirement, applied to the real world of modem technology, does not
contemplate in every case a verbal precision of the kind found in
mathematics." Id.
Analysis
We now address the Examiner's indefinite issues.
"does not substantially compress, " "substantially uncompressed"
Appellants contend that the Specification describes an electrode array,
having a diameter and stiffness, that does not compress ( and thus damage)
the membranous labyrinth (App. Br. 18-19). Appellants contend that "[a]
person of ordinary skill in the art would readily understand, based upon the
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Application 14/744,951
device at hand, what level of compression would cause such damage" (App.
Br. 18).
We agree with Appellants that claims 22, 28, and 35 are not indefinite
because the relative terms "does not substantially compress" and
"substantially uncompressed" do not render the claim scope unclear to one
skilled in the art. As seen above, the Specification describes compression in
the context of avoiding trauma to the vestibular system's delicate anatomical
structures (FF 1 ). A person of skill in the art would understand that the claim
terms are reasonably interpreted to allow some degree of compression so
long as trauma to the membranous labyrinth is avoided. Relative terms such
as "substantially" do not render patent claims so unclear as to prevent a
person of skill in the art from ascertaining the scope of the claim. Deere &
Co. v. Bush !log, 703 F.3d 1349, 1359 (Fed. Cir. 2012).
"about"
Appellants contend "the lengths of 'about 1.15 mm,' and 'about 150
microns"' are "definite because infringement could clearly be assessed by a
person of ordinary skill in the art through use of, for example, calipers"
(App. Br. 20, citing MPEP § 2173.05(b )). Appellants further exemplify use
of "about" in the prior art cited by the Examiner (App. Br. 20-21, citing
MPEP § 2173.02(II)).
We agree with Appellants because the Specification provides
dimensions (1.15 mm and 150 microns) such that the electrode is placed
reliably in the labyrinth without causing trauma (FFl, FF2). The term
"about" can be understood in light of the technology embodied by the
invention, as shown by the Specification and the prior art, to encompass the
claimed dimensions within a reasonable degree of precision so as to avoid
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trauma. See Modine Mfg. Co. v. US. Int'! Trade Comm'n, 75 F.3d 1545,
1557 (Fed. Cir. 1996).
"substantially an entire length"
Appellants contend "[a] person of ordinary skill in the art would
readily understand, based upon the Specification ... what portion of the
electrode ... would constitute 'substantially an entire length' to provide"
atraumatic insertion and avoid damage to delicate anatomical structures
(App. Br. 18-19). Appellants further exemplify use of the terms
"substantially" to modify dimensions in the prior art cited by the Examiner
(App. Br. 19, citing MPEP § 2173.02(II)).
We agree with Appellants because the claim term "substantially an
entire length" is reasonably interpreted as requiring that the arrays comprise
a stiffness along an entire length or along a length slightly less than the
entire length, as seen in Figure 4 (FF2) where the embedded stiffener 34
extends almost entirely along length A. While this is broad, it is not
indefinite because "breadth is not to be equated with indefiniteness." In re
Miller, 441 F.2d 689, 693 (CCPA 1971).
Conclusions of Law
The evidence of record does not support the Examiner's position that
the claim terms "does not substantially compress," "substantially
uncompressed," "about" and "substantially an entire length" are indefinite.
B. 35 USC§ 103(a) over Della Santina, Gantz, and Zhulati
The Examiner finds Della Santina teaches "a trifurcated electrode
array ... as shown in 200 Fig 2A, D and also teaches this electrode
assembly is inserted into the vestibular labyrinth" (Ans. 7). The Examiner
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acknowledges Della Santina "does not teach the claimed dimensions ... and
thus does not teach that the electrode array is dimensioned such that residual
vestibular function of the semicircular canal in which the at least one
electrode array is implanted is retained" (id.).
The Examiner finds Gantz "teaches a lead with an electrode array
with a diameter of 0.1---0.4 mm ... and also teaches an insertable portion of
the electrode array (i.e. span) of the electrode array is 8-15 mm" (Ans. 7-8).
The Examiner finds Zhulati teaches a stiffener in an electrode array (Ans. 8-
9).
The Examiner finds it obvious to "modify the teachings of Della
Santina with a lead having an electrode array diameter of 0.1---0.4 mm and a
span as taught by Gantz in order to provide the predictable results of having
an easily insertable electrode array" (Final Act. 11 ). The Examiner finds it
obvious to "modify the teachings of Della Santina in view of Gantz with the
stiffening member as taught by[] Zhulati in order to provide the predictable
results of ensuring that the electrode array can be easily manipulated during
insertion" (Final Act. 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Della Santina, Gantz, and Zhulati
render claims 20-39, 41, and 42 obvious?
Findings of Fact
3. The Specification teaches "[t]he array 26 is inserted within the
canal, proximate to the ampulla 50, between the bony labyrinth 52 and the
membranous labyrinth 53" (Spec. 10:2-3).
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Application 14/744,951
4. Figure 7 of the Specification is reproduced below:
---·--·--··---·--·--·--·--··-··--··--·-·--·--·--··-··----...
Pf1~:tP-r iGt' ~~ornt-~.)rcL~ ~aY C?lna~
"Figure 7 [] illustrates the appropriate fit of the electrode array . . . . [T]he
electrode array 26 lies next to, but not compressing or penetrating the
membranous labyrinth 53, with duct 54 intact. The diameter of the array is
selected to be sufficiently small to achieve this" (Spec. 10:6-10).
5. The Specification teaches: "the insertion depth is controlled, so
as to prevent the potential damage to the ampulla .... In a preferred form,
the part of the array for insertion is 2.5 mm long, and a stopper is provided
to prevent further insertion" (Spec. 10:11-14).
6. The Specification teaches "[i]t is preferred that the electrode
array ... has a diameter of 150 microns or less" (Spec. 11: 15-1 7).
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Application 14/744,951
7. Figure 2D of Della Santina is reproduced below:
AG. 20
Figure 2D depicts a schematic block diagram of a fully implantable
cochlear/vestibular implant system including a trifurcated vestibular
electrode array 200.
8. Della Santina teaches an implantable cochlear/vestibular
stimulator (ICVS) that provides bipolar stimulation (Della Santina 5: 17-55).
"[T]he ICVS 112 could include two electrode arrays 114, one of which ... is
trifurcated at its end [] so that each of its three branches can be separately
implanted within a different semicircular canal" (id.).
9. Della Santina teaches:
The electrode arrays 12 and 200 include a multiplicity of
spaced-apart electrode contacts 13 at their distal ends . . . . A
typical cochlear electrode array 12 may include, e.g. anywhere
from 8 to 22 electrode contacts 13. A typical vestibular
electrode array 200 may include, e.g., anywhere from 1 to 22
electrode contacts 13 at each of its ... ends 203.
(Della Santina 12: 5-15)
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10. Della Santina teaches the "system advantageously is flexible in
its application so as to meet the particular needs and wants of a given patient
at a given time, including the ability to adapt to a range of head sizes and
shapes" (Della Santina 15:7-10).
11. Gantz teaches a cochlear implant that includes an electrode
array with a collar (Gantz ,r 108). "The collar 35 . .. prevents further
penetration of the electrode array 30 into the cochlea" (Gantz ,r 102).
12. Figure 2A of Gantz is reproduced below:
F/6. 2a
Figure 2A shows an electrode array 30, including a length L, electrodes 32,
and collar 35 (Gantz ,r 104). "The length of the inserted portion of the array
Lis preferably set to be between 8-15 mm" (Gantz ,r 109).
13. Gantz teaches:
As shown in FIGS. 2a and 2b, the electrode contacts 32 are
positioned on the medial side of the electrode array . . . . In
normal hearing, the oscillation of the basilar membrane is
required and the amplitude of the sound is depend[ e ]nt on the
damping of the membrane motion by the fluid within the
cochlea. Therefore, it is important that when an electrode array
is inserted into the cochlea with the intention to preserve this
natural capacity to detect sounds, as is the case with the present
invention, the volume of the array must be minimised [sic] so
that this damping will not be affected by the exclusion of the
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cochlea fluid. The electrode array 30 is of a smaller diameter
than a conventional electrode array, and in the embodiment as
shown, includes only 6 electrodes 32.
(Gantz ,r 106).
14. Gantz teaches "the electrode array is shown as having a
substantially constant diameter along its length of between 0.1 and 0.4 mm"
(Gantz ,r 108).
15. Zhulati teaches a lead 100 with a "stiffener 108 [] shown as a
tube 124 ... made of Nitinol, stainless steel or other bio-compatible
materials. Tube 124 preferably possesses as substantially constant diameter
along its length" (Zhulati 4: 19--29).
16. Zhulati teaches "the stiffener [] may be dimensioned to conform
to the anatomy of a patient" and may be "made from a super-elastic Nitinol
alloy" where "[t]he exterior diameter of the stiffener may be '0.021 and an
interior diameter of 0.017"' (Zhulati 7:26-43).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does not more than yield predictable results"
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "Where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation." In
re Aller, 220 F.2d 454,456 (CCPA 1955), see also, In re Applied Materials,
692 F.3d 1289, 1295 (Fed. Cir. 2012) ("the prior art discloses dimensional
values overlapping the ranges claimed in [the] Patents).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 10-19; FF 3-16) and agree that
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the claims are rendered obvious by Della Santina, Gantz, and Zhulati. We
address Appellants' arguments below.
Claims 20, 22, 27, and 28
Appellants contend the functional language "dimensioned,"
"configured to," and "configured for" should be interpreted as structural
limitations (App. Br. 23, 27 and 31-32). For example, Appellants contend
"preservation of the residual vestibular function is achieved using a suitable
dimension, for example for a circular array, a diameter less than 150
microns" (App. Br. 23). Appellants further contend "particular structural
features relating to flexibility, stiffness, and diameter are all relevant to an
apparatus configured such that the electrode array does not substantially
compress [a] membranous labyrinth" (App. Br. 27).
Based on this understanding, Appellants contend none of the
references disclose: "an electrode array dimensioned to preserve residual
vestibular function" (App. Br. 23); "an electrode array configured to be
'implanted in the semicircular canal such that the electrode array does not
substantially compress a membranous labyrinth of the semicircular canal"'
(App. Br. 28); or "configured for operable insertion between a bony
labyrinth and a membranous labyrinth of the vestibular system" (App. Br.
31) (internal quotations removed).
We find these arguments unpersuasive because we agree with the
Examiner that the prior art combination would "result in retaining residual
function since those ranges fall within the applicant's disclosed diameter
range and would necessarily retain function as well" (Final Act. 11 ). In
particular, the Examiner cited Gantz' teaching that "it is important that when
an electrode array is inserted into the cochlea with the intention to preserve
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[its] natural capacity to detect sounds ... the volume of the array must be
minimised [sic] so that this damping will not be affected by the exclusion of
the cochlea fluid" (FF 13). Thus, Gantz recognizes the need to dimension
the electrode array to retain function (FF 13) and Della Santina also teaches
the need to optimize to the particular patient (FF 10).
As combined, Della Santina and Gantz (and Zhulati) teach an
electrode array (FF 7-10), the array being implantable into the semicircular
canals (FF 8) and having a structure, e.g., a minimized diameter of 0.1 mm
(FF 14 ), which is dimensioned to preserve residual vestibular function
without compression (FF 13). Similarly, the electrode array with a
minimized diameter would have a structure sufficiently small to be
implantable between a bony labyrinth and a membranous labyrinth so as not
to substantially compress the membranous labyrinth (see FF 13).
We therefore find that it is the combination of Della Santina's
vestibular stimulation electrode array system (FF 7-10), Gantz' electrode
array sizes and diameters (FF 12, 14) and teaching to dimension to retain
internal cochlea fluid function (FF 13) with Zhulati's stiffeners (FF 15-16)
that renders the claims obvious. We are therefore not persuaded by
Appellants' separate arguments regarding the references because "[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Claims 21, 29, 32, 35, 41, and 42
Appellants contend:
At least in light of the Specification, a person of ordinary skill
in the art would understand that the broadest reasonable
interpretation of a stiffness comparable to a 0.12 mm platinum
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wire would include only a stiffness that was similar to or had
equivalent qualities to the stiffness of a 0.12 mm platinum wire
because that stiffness would prevent damage to anatomical
structures as described in the Specification. A person of
ordinary skill in the art would not consider the broadest
reasonable interpretation to include any stiffness just because
any stiffness could be compared to the stiffness of platinum.
Accordingly, none of the cited references disclose this element.
(App. Br. 26).
We agree with the Appellants that "stiffness" should be interpreted as
a stiffness that would prevent damage to anatomical structures as described
in the Specification. As to the argument that "none of the cited references
disclose this element," we find this unpersuasive because, as noted by the
Examiner, Zhulati teaches a stiffener for an electrode dimensioned to
conform to the anatomy of a patient (FF 16; cf Ans. 9). Given the desire to
conform to the anatomy of the semicircular canals while preserving their
natural capacity, it would have been within the level of ordinary skill in the
art to discovery an optimum value of stiffness. "[D]iscovery of an optimum
value of a result effective variable .. .is ordinarily within the skill of the art."
Applied Materials, 692 F.3d at 1295. Appellants do not identify any
unexpected results or other secondary consideration, commensurate in scope
with the claim, to consider with the Examiner's prima facie case of
obviousness relying on optimization of Zhulati's teaching of stiffeners
"dimensioned to conform to the anatomy of a patient" (FF 16).
Claims 25 and 38
Appellants contend the "span is the length from a beginning of a first
electrode to the end of a last electrode," and that "none of the disclosure
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cited in Gantz teaches or suggests a span 'of about 1.15 mm"' (App. Br. 30-
31).
Although we agree with Appellants' interpretation of "span," we do
not find Appellants' argument persuasive as to the Examiner's obviousness
rejection. Della Santina teaches a vestibular array with 1 to 22 spaced-apart
electrodes and a cochlear array having 8 to 22 contacts (FF 7 and 9). Gantz
teaches a cochlear array having a length dimension between 8 mm-15 mm
with a span including 6 electrodes (FF 12-13). The Examiner's conclusion
is that it would have been obvious to modify Della Santina's vestibular
array, in view of Gantz's teaching on dimensions of cochlear arrays, to have
an electrode span of about 1.15 mm "in order to provide the predictable
results of having an easily insertable electrode array" (Final Act. 11 ). The
predictable results of an easily insertable vestibular array include the span of
the vestibular electrodes being sized so the distance between electrodes fits
in "a given patient at a given time" as taught by Della Santina (FF 10).
As we "take account of the inferences and creative steps that a person
of ordinary skill in the art would employ," we find a person of ordinary skill
in the art would have reasonably optimized the electrode span of Della
Santina, Gantz, and Zhulati in order to be able to fit within the semicircular
canal as required. KSR Int 'l, 550 U.S. at 418; see also id. at 421 ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton").
Likewise, it is also well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in the art
would have reasonably been expected to draw therefrom. See In re Fritch,
972 F.2d 1260, 1264---65 (Fed. Cir. 1992). Here, an ordinarily skilled artisan
would reasonably infer that a device intended to be implanted into the
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semicircular canal would require an electrode span small enough to fit
within the space which would be a matter of routine optimization (see FF 10
where Della Santina teaches the "system advantageously is flexible in its
application so as to meet the particular needs and wants of a given patient at
a given time, including the ability to adapt to a range of head sizes and
shapes").
Claims 23, 24, 26, 30, 31, 33, 34, 36, 37, and 39
Appellants do not separately argue these obviousness rejections,
instead relying on their arguments to overcome the combination of Della
Santina, Gantz, and Zhulati. Having affirmed the obviousness rejection of
claims 20, 29, and 32 from which these claims depend for the reasons given
above, we also conclude the claims are obvious for the reasons given by the
Examiner.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Della
Santina, Gantz, and Zhulati render claims 20-39, 41, and 42 obvious.
C. 35 USC§ 103(a) over Della Santina, Gantz, Zhulati, and Kuzma
Claim 40
Appellants contend "the wire is not a stiff en er but instead 'a series of
insulated electrical conductors 56' that connect to electrode elements (55)"
(App. Br. 33). Appellants further contend "the combination would lack the
claimed stiffener and merely have a wire that extends to create a linkage
with a positioning member" (App. Br. 34).
We find these arguments unpersuasive because the Appellants attack
the references individually rather than address what the references suggest
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together. Merck, 800 F .2d at 1097. Considering the teachings of the
references as a whole, the Examiner relies on Kuzma's teachings to suggest
"modifying the stiffener in view of Gantz and [] Zhulati to extend beyond
the distal most electrode as claimed" (Ans. 12). The Examiner finds Kuzma
teaches "wires embedded in an electrode array that extends beyond a distal
most electrode in an electrode array (e.g. 56a, Fig 12, Col. [11], 43--46) as
well as a positioner that extends beyond the distal most electrode ... ( e.g.
52, Fig 12, 23)" (id.). We agree with the Examiner that the combination of
the art provides a reason to extend the stiffener distal beyond the distal
electrode "in order to provide the predictable results of providing the
clinician with more control of the lead during implantation" (Final Act. 20).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that Della
Santina, Gantz, Zhulati, and Kuzma render claim 40 obvious.
SUMMARY
In summary, we reverse the rejection of claims 22, 25, 26, 28, 34, 35,
38, 39, 41, and 42 under 35 U.S.C. § 112(pre-AIA), second paragraph.
We affirm the rejection of claims 20-39, 41, and 42 under 35 U.S.C.
§ 103 (a) over Della Santina in view of Gantz and Zhulati.
We affirm the rejection of claim 40 under 35 U.S.C. § 103(a) over
Della Santina in view of Gantz and Zhulati, further in view of Kuzma.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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