Ex Parte Robinson et al

Patent Trial and Appeal Board

Mar 24, 2017

12401239 (P.T.A.B. Mar. 24, 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.
12/401,239 03/10/2009 Reginald D. Robinson P0029673.00/1023-810US01 5480
71996 7590 03/28/2017
SHUMAKER & SIEFFERT , P.A
1625 RADIO DRIVE , SUITE 100
WOODBURY, MN 55125
EXAMINER
MAYE, AYUB A
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
03/28/2017 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):
pairdocketing @ ssiplaw.com
medtronic_neuro_docketing @ cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REGINALD D. ROBINSON, DAVID D. DIFFERDING,
JAMES A. JOHNSON, BERNARD Q. LI, GERALD G. LINDNER,
BRAD C. TISCHENDORF, and ANDREW J. THOM
Appeal 2015-005073
Application 12/401,239
Technology Center 3700
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reginald D. Robinson et al. (Appellants)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—28. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Medtronic, Inc. is identified as the real party in interest. Appeal Br. 3.
Appeal 2015-005073
Application 12/401,239
INVENTION
Claims 1,16, and 25 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. A system comprising:
a first functional module of a medical device;
a second functional module of the medical device;
an optical feedthrough assembly different than the first
functional module and coupled to the first functional module;
and
a radiant energy source that emits a beam through the
optical feedthrough assembly to perform a manufacturing
process on the first functional module and the second functional
module.
REJECTIONS
Claims 1—5, 10, 13—21, and 24—28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over He (US 2006/0259090 Al, published Nov. 16,
2006) and Benner (US 6,047,643, issued Apr. 11, 2000).
Claims 6—9, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over He, Benner, and Starke (US 2007/0134974 Al, published
June 14, 2007).
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over He, Benner, and Clarke (EP 1,234,595 A2, published
Aug. 28, 2002).
ANALYSIS
Claims 1—5, 10, 13—21, and 24—28 over He and Benner
Claims 1—5, 10, 13—15, and 27
The Examiner finds that He discloses all the limitations of claim 1
except for the optical feedthrough assembly being different than the first
functional module. Final Act. 3, 7 (citing He 5, 6, 26, 27, Figs. 5, 6). The
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Application 12/401,239
Examiner indicates that He discloses first functional module 142 (i.e., first
portion 142 of housing 140) and second functional module 144 (i.e., second
portion 144 of housing 140). Ans. 10; see He 123, Fig. 3. The Examiner
further indicates that He’s metal layer 150 can be considered an “optical
feedthrough”:
A polymer-polymer interface is formed between two portions of
the implantable stimulator. A light absorbing metal layer is
disposed on the interface. The light absorbing metal layer is
irradiated with a laser to heat the metal layer and weld the
interface. Therefore, ft]he light absorbing metal layer provide
[sic] a conductive feedthrough for laser or optical given broadest
reasonable interpretation.
Ans. 12 (emphasis added).
The Examiner finds that Benner discloses an optical feedthrough
assembly (fiber optic coupler 50) different than, and coupled to, a first
functional module (i.e., housing 12). Final Act. 7 (citing Benner, Fig. 2); see
also Benner, col. 3,11. 64—67, col. 4,11. 62—63. The Examiner concludes that
it would have been obvious to modify He to include an optical feedthrough
assembly different than the first functional module, as taught by Benner, “to
efficiently focus[] laser energy onto the energetic material in a chamber both
with a chemical bond and a compression bond, the chemical bond formed by
fusing the sealing medium to the interior walls of the chamber.” Final Act. 7
(emphasis added) (citing Benner, col. 2,11. 5—10).
Appellants contend that one of ordinary skill in the art would not have
modified He’s implantable medical device for the reason stated by the
Examiner; particularly, “one of ordinary skill in the art would not have
considered focusing laser energy onto energetic material as a reason for
modifying the manufacturing of an implantable medical device.” Appeal
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Application 12/401,239
Br. 8. Appellants contend that a skilled artisan “would have recognized that
focusing laser energy onto energetic material (i.e., an explosive charge)
would result in the destruction of the implantable medical device of He.” Id.
Benner discloses a hermetically sealed laser actuator/detonator 10
including housing 12 and energetic material 26, and a fiber optic coupler 50
coupled to housing 12. Benner, col. 3,11. 64—67, col. 4,11. 62—63, Fig. 2.
Benner describes “energetic material 26 such as a TiHx/KC104 explosive
charge.” Id. at col. 4,11. 3^4 (emphasis added). Laser detonator/actuator 10
couples laser energy into energetic material 26. Id. at col. 4,11. 59—61.
Benner describes that optical fiber 54 is brought to bear upon pressure
sealing medium 32 and laser energy 56 is focused onto “charge 26.” Id. at
col. 4,11. 63-66.
He does not irradiate “energetic material” as disclosed in Benner.
Particularly, He teaches using a light absorbing metal that converts absorbed
laser radiation into heat to enable laser welding of a polymer-polymer
interface. See He 121. In contrast, Benner’s laser actuator/detonator is
adapted for use “with a variety of explosive device types. See Benner, col.
1,11. 63—67. As such, Benner’s laser actuator/detonator is unrelated to He’s
implantable medical device
Further, the Examiner’s rationale for modifying He corresponds to
specific disclosure in Benner that is unrelated to the use of the “radiant
energy source” for irradiating the energetic material. Particularly, Benner
states:
This invention results from the realization that a robust
hermetically sealed laser detonator can be effected by sealing a
ball lens which efficiently focuses laser energy onto the energetic
material in a chamber both with a chemical bond and a
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Application 12/401,239
compression bond, the chemical bond formed by fusing the
sealing medium to the interior walls of the chamber ....
Benner, col. 2,11. 4—10 (emphasis added). This description indicates that the
ball lens is sealed with a chemical bond and a compression bond. This
description does not indicate that focusing laser energy onto the energetic
material produces “a chemical bond and a compression bond, the chemical
bond formed by fusing the sealing medium to the interior walls of the
chamber.” Rather, the unrelated function of the laser source in Benner is to
irradiate the energetic material contained in the hermetically sealed laser
detonator.
Further, claim 1 recites “a radiant energy source . . . emits a beam
through the optical feedthrough assembly.” Appellants’ Specification
describes that optical feedthrough assembly 40 includes optical window 46
“configured to allow radiant energy to pass through.” See Spec. 32, Fig. 2.
Figure 5 shows radiant energy source 60 emitting beam 62 through optical
window 46 to form a seal between modules 30, 32 in a manufacturing
process. See id. 138, Fig. 5. In view of this disclosure, we construe an
“optical feedthrough assembly” as an assembly that allows radiant energy to
pass through it.
Appellants contend that He’s metal layer 150 is not an optical
feedthrough, but is a “light absorbing metal layer.” AppealBr.il. We
agree. The absorption of light by He’s metal layer 150 is physically
different from that radiation passing “through” metal layer 150. The
Examiner does not direct us to any disclosure in He that metal layer 150
allows light to pass through it rather than absorbing the light. Claim 1 does
not recite a “conductive feedthrough for laser or optical,” as described by the
Examiner. Ans. 12. We agree with Appellants that He’s metal layer 150 is
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Application 12/401,239
not an optical feedthrough, as a skilled artisan would construe this term in
view of the Specification. In this regard, “[a] construction that is
‘unreasonably broad’ and which does not ‘reasonably reflect the plain
language and disclosure’ will not pass muster.” Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). As the Examiners’
finding based on this construction is not supported by a preponderance of the
evidence, it also is not apparent how the Examiner proposes to modify He in
view of Benner to include the claimed “optical feedthrough assembly.”
We do not sustain the rejection of claim 1, and claims 2—5, 10, 13—15,
and 27 depending therefrom, as unpatentable over He and Benner.
Claims 16—21, 24—26, and 28
Claim 16 recites limitations similar to those in claim 1. In rejecting
claim 16, the Examiner relies on the same findings and reasoning as for
claim 1. See Final Act. 4—5, 7. For reasons similar to those discussed for
claim 1, we do not sustain the rejection of claim 16, and claims 17—21, 24,
and 28 depending therefrom, as unpatentable over He and Benner.
Claim 25 recites limitations similar to those in claim 1. In rejecting
claim 25, the Examiner relies on the same findings and reasoning as for
claim 1. See Final Act. 6, 7. We also do not sustain the rejection of claim
25, and claim 26 depending therefrom, as unpatentable over He and Benner.
Claims 6—9, 22, and 23 over He, Benner, and Starke
Claims 6—9, 22, and 23 depend from claim 1 or 16. The Examiner’s
use of Starke to reject these dependent claims does not cure the deficiencies
of the rejection of claim 1 or 16. Final Act. 7—8. We do not sustain the
rejection of claims 6—9, 22, and 23 as unpatentable over He, Benner, and
Starke for the same reasons discussed above for claims 1 and 16.
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Application 12/401,239
Claims 11 and 12 over He, Benner, and Clarke
Claims 11 and 12 depend from claim 1. The Examiner’s use of
Clarke to reject these dependent claims does not cure the deficiencies of the
rejection of claim 1. Final Act. 8—9. We do not sustain the rejection of
claims 11 and 12 as unpatentable over He, Benner, and Starke for the same
reasons discussed above for claim 1.
DECISION
The Examiner’s decision to reject claims 1—28 is reversed.
REVERSED
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