Ex Parte Sommer et al

Patent Trial and Appeal Board

Dec 12, 2018

14259904 (P.T.A.B. Dec. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/259,904 04/23/2014
27581 7590 12/14/2018
Medtronic, Inc. (CVG)
8200 Coral Sea Street NE.
MS:MVC22
MINNEAPOLIS, MN 55112
FIRST NAMED INVENTOR
John L. Sommer
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.
C0004090.USU1 1454
EXAMINER
MALAMUD, DEBORAH LESLIE
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/14/2018 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):
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. SOMMER and LINDA L. FRANKE
Appeal2017-009349
Application 14/259,904 1
Technology Center 3700
Before MICHAEL J. FITZPATRICK, JAMES A. WORTH,
and ELIZABETH A. LA VIER, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner's rejections of claims 1---6 and 14--17. We have jurisdiction under
35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE.
BACKGROUND
The Specification relates to implantable medical electrical leads.
Spec. 1 :4--5. Claim 1 is illustrative:
1. A medical electrical lead, comprising:
an elongated lead body having an outer circumference and
provided with an electrode;
1 Appellants identify the real party in interest as Medtronic, Inc. Appeal Br.
2.
Appeal2017-009349
Application 14/259 ,904
a push tube, mounted circumferentially around the lead body,
the lead body longitudinally movable with respect thereto;
a fixation helix mounted to the push tube, extending along a
generally helical axis around the outer circumference of the
lead body, the fixation helix comprising a free end spaced from
and extending from the lead body; and
a retention mechanism employable to prevent longitudinal
movement of the lead body relative to the push tube.
Appeal Br. 13 (Claims Appendix).
REJECTIONS MAINTAINED ON APPEAL
1. Claims 1-3 and 14--17 stand rejected under 35 U.S.C.
§ 102(a)(l) as anticipated by Zarembo. 2 Ans. 2.
2. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over Zarembo and Falk. 3 Ans. 3.
3. Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as
unpatentable over Zarembo and Sommer. 4 Ans. 3.
DISCUSSION
The Examiner's rejection of claim 1 relies on Figure 11 of Zarembo,
and its accompanying text in column 13. See Final Action 4. Figure 11 of
Zarembo is reproduced below:
2 Zarembo et al., US 7,920,927 B2, issued Apr. 5, 2011.
3 Falk et al., US 7,860,580 B2, issued Dec. 28, 2010.
4 Sommer et al., US 7,532,939 B2, issued May 12, 2009.
2
Appeal2017-009349
Application 14/259 ,904
Fig. 11
Figure 11 of Zarembo is a sectional view of a lead assembly 1100, with an
elongate body 1104 extending from proximal end 1106 to distal end 1108, a
conductor 1110, and a push tube 1120. Zarembo 13: 17--48.
The last clause of claim 1 recites "a retention mechanism employable
to prevent longitudinal movement of the lead body relative to the push
tube."5 Although the Examiner's rejection of claim 1 relies generally on
Figure 11 of Zarembo, the rejection does not cite to any particular passage or
element of Zarembo as teaching the claimed retention mechanism. See Final
Action 4. In the Answer, 6 the Examiner identifies a specific corresponding
structure in Zarembo (flange 1130 of Figure 11) as capable of preventing
longitudinal movement of the lead. Ans. 5. In support, the Examiner quotes
Zarembo's written description: "the flange 1130 engages against a surface
5 Claim 5, the only other independent claim on appeal, includes an identical
clause. See Appeal Br. 14 (Claims Appendix).
6 As Appellants point out (see Reply Br. 2) the Examiner's reliance on flange
1130 of Zarembo appears to be new in the Answer. Because we are not
persuaded by the merits of the Examiner's position, we need not further
address its potential procedural aspects. See 37 C.F.R. § 4I.39(a)(2) ("[A]ny
rejection that relies upon any Evidence not relied upon in the Office action
from which the appeal is taken (as modified by any advisory action) shall be
designated by the primary examiner as a new ground of rejection.").
3
Appeal2017-009349
Application 14/259 ,904
1128 during insertion of the active fixation device 1102 and acts as a depth
stop to prevent deeper insertion of the active fixation device 1102 into the
surface 112 8." J d. ( quoting Zarembo 14: 10-14).
We agree with Appellants (see Appeal Br. 6; see also Reply Br. 2)
that the Examiner has not established that Zarembo discloses a retention
mechanism as claimed. As the above-quoted passage from Zarembo
demonstrates, in "act[ing] as a depth stop" (Zarembo 14: 12-13), the flange
1130 would stop further longitudinal movement (in the distal direction) of
the entire device. In contrast, the retention mechanism of claim 1 must be
capable of "prevent[ing] longitudinal movement of the lead body relative to
the push tube." Appeal Br. 13 (Claims Appendix). Because the Examiner
has not identified any structure in Zarembo capable of satisfying this
claimed intended use, we cannot sustain the rejection of claim 1 on this
record.
All of the rejections rely similarly on Zarembo. Accordingly, we
reverse all of the rejections.
CONCLUSION
The rejections of claims 1---6 and 14--17 are reversed.
REVERSED
4