Ex Parte Shehada et al

Patent Trial and Appeal Board

Mar 23, 2016

12645252 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/645,252 12/22/2009
36802 7590 03/25/2016
PACESETTER, INC
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
Ramez Shehada
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.
A09Pl069 7879
EXAMINER
HANKINS, LINDSEY G
ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
03/25/2016 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):
Patent.CRMDSylmar@sjm.com
lcancino-zepeda@sjm.com
epineiro@sjm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMEZ SHEHADA, XIAOYI MIN, JIN ZHANG,
BENJAMIN COPPOLA, DA VE ANDERSON, GENE A.
BORNZIN, and PHONG D. DOAN
Appeal2014-000603
Application 12/645,252
Technology Center 3700
Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
MARK A. GEIER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to an MRI-compatible lead employing
multiple miniature inductors. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
Appeal2014-000603
Application 12/645,252
1. An implantable medical lead comprising:
a first electrode near a distal portion of the lead; and
a first electrical circuit extending through the lead to the
first electrode, the first electrical circuit comprising at least one
conductor and a first band stop filter coupled between the
conductor and the electrode, the first band stop filter comprising
a first group of wire wound inductors in parallel and a second
group of wire wound inductors in parallel, the first group in series
with the second group.
REJECTIONS
Claims 1-3, 7-10, and 12-18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stevenson (US 200710112398 Al). Final Act. 2.
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stevenson in view of In re Rose, 105 USPQ 237 (CCP A 1955). Final
Act. 4
Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stevenson in view of Pianca (US 2003/0032997 Al).
Final Act. 5.
Claim 11 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Stevenson in view of In re Leshin, 125 USPQ 416. Final Act. 5.
OPINION
Claim 1 is the sole independent claim and Appellants express that all
claims and rejections should stand or fall according to claim 1. App. Br. 7,
8.
Appellants and the Examiner generally agree concerning most points
related to the Stevenson disclosure; Stevenson discloses the subject matter of
claim 1 with the exception of using "wire wound inductors" in the
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Application 12/645,252
embodiment involving constructing the Figure 22 TANK circuit using the
parallel inductors 318, 318' illustrated in Figure 72. App. Br. 5---6; Final
Act. 3; Ans. 6. Appellants and the Examiner also agree that Stevenson
demonstrates that wire wound inductors were known in the art. App. Br. 6;
Final Act. 2 (citing Stevenson paras. 284-286); Ans. 6-7. Appellants direct
our attention to the fact that Stevenson expressly teaches only substitution of
such wire wound inductors for the "previously described" embodiments,
which refers to those depicted prior to Figure 55, and the Examiner's
rejection relies on the embodiment depicted in Figure 72 of Stevenson. App.
Br. 6. It is true that the absence of an express disclosure teaching to
combine distinct embodiments will ordinarily defeat an anticipation
rejection under§ 102. However, the same is not necessarily true for an
obviousness rejection under§ 103(a). An analysis under§ 103(a) must take
into account the knowledge of the skilled artisan apart from what the
references disclose along with any differences between the prior art and
claimed subject matter.
We agree with the Examiner's characterization of the proposed
substitution as that of like elements for the same or a similar purpose. Ans.
7. Appellants express disagreement with, but do not provide sufficient
evidence or technical arguments to apprise us of error in, the Examiner's
articulated rationale regarding design tradeoffs including volume, length,
and inductance. App. Br. 6; Final Act. 3. Appellants also contend that
neither Stevenson nor the Examiner explains how the Examiner's proposed
combination would be physically implemented. App. Br. 7. However, both
types of designs are demonstrated by Stevenson as known in the art and
Appellants do not provide any evidence or technical reason to demonstrate
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Application 12/645,252
or explain why the skilled artisan would have any problem implementing the
Examiner's proposed combination to arrive at a working device.
On the record before us, we agree with the Examiner (Ans. 7) that one
of ordinary skill can use his or her ordinary skill, creativity, and common
sense to make the necessary adjustments and further modifications to result
in a properly functioning device. See KSR Int 'l. v. Teleflex, 550 U.S. 398,
418 (2007) ("[T]he [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.").
Appellants also argue "the need for such a configuration would not
exist[] in the embodiment disclosed in FIG. 72 of Stevenson et al. because
the wire wound inductors do not suffer the same DC resistance issues of the
thin trace spiral wound inductors." App. Br. 7. As best as we can
understand this argument which is not further developed, Appellants are
contending that once the Figure 72 embodiment is employed, the purported
benefits associated with a wire wound inductor would essentially be
redundant or unnecessary. Again, to the extent this is Appellants' point of
contention, Appellants do not introduce any evidence or technical reasoning
in support of this argument. The evidence and reasoning of record weighs in
favor of the Examiner's position that one skilled in the art would understand
any design tradeoffs involved in making the proposed substitution. There is
no evidence or reasoning supporting the notion that one skilled in the art
would have reason not to combine the particular embodiments cited by the
Examiner.
Appellants final argument is that the claim "recites a single band stop
filter" which is not reasonably read on the two separate filters in series of
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Application 12/645,252
Stevenson. App. Br. 7. This argument effectively asks us to exclude
Appellants' embodiment depicted in Figure 11 from the scope of claim 1.
We recognize that Appellants disclose an embodiment (depicted in Figure 5)
wherein the series TANK circuits have the same relevant values for the
inductive and capacitive elements and attenuate at or about a single
frequency. However, Appellants do not apprise us of any language in the
claims or Specification, or any evidence of disavowal, that would lead one
skilled in the art to conclude that the broadest reasonable interpretation of
claim 1 covers only Appellants' Figure 5 embodiment and excludes
Appellants' Figure 11 embodiment. That being the case, the Examiner
correctly concluded that the recited band stop filter does not necessarily
exclude filters that attenuate at multiple frequencies in the same way as in
the present application. Ans. 9.
DECISION
The Examiner's rejections are affirmed.
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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