Ex Parte Sommer et al

Board of Patent Appeals and Interferences

Sep 7, 2012

10635166 (B.P.A.I. Sep. 7, 2012)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
10/635,166 08/06/2003 Sommer, John L.

EXAMINER
Medtronic Inc.
7000 Central Ave., N.E.
Mailstop B408
Minneapolis, MN 55432
Alter, Alyssa
ART UNIT PAPER NUMBER
3762
MAIL DATE DELIVERY MODE

09/07/2012 PAPER

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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOHN L. SOMMER, DOUGLAS S. HINE,
and DOUGLAS N. HESS
__________

Appeal 2011-012371
Application 10/635,166
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to medical systems, and medical electrical lead adaptor
assemblies. The Patent Examiner rejected the claims for anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-012371
Application 10/635,166

2
STATEMENT OF THE CASE
Claims 1, 4, 9, 13, 16, 20, and 24-33 are on appeal. Claims 1 and 13
are representative and read as follows (emphasis added):
1. A medical system comprising:
an implantable medical device including a connector bore;
an electrical lead connector including a connector element; the
connector element comprising a portion defining a retention edge with an
engagement surface extending laterally to a centerline axis of the connector
element; and
a connector sleeve including
a lumen adapted to receive the lead connector,
a contact element within the connector sleeve lumen adapted to
electrically engage the connector element,
a retention element extending into the sleeve lumen, the
retention element deflectable during insertion of the electrical lead
connector into the connector sleeve lumen and redeploying to its
initial position to mechanically engage the retention edge surface of
the connector element portion and retain the connector element within
the connector sleeve lumen and
an external conductive surface electrically coupled to the
contact element and adapted for electrical engagement within the
connector bore of the implantable medical device.

13. A medical electrical lead adaptor assembly, comprising:
a lead connector adapted to be coupled to a medical electrical lead and
having a connector element comprising a portion defining a retention edge
with an engagement surface extending laterally to a centerline axis of the
connector element;
a connector sleeve having a lumen adapted to receive a lead
connector;
a contact element within the sleeve lumen adapted to electrically
engage a connector element of the lead connector
a retention element extending into the sleeve lumen and deflecting
during insertion of the lead connector into the connector sleeve lumen and
redeploying to its initial position to mechanically engage the retention edge
surface of the connector element portion and retain the lead connector within
the connector sleeve lumen; and
Appeal 2011-012371
Application 10/635,166

3
an external conductive surface on the connector sleeve electrically
coupled to the contact element and adapted for electrical connection to an
implantable medical device.

The Examiner rejected the claims as follows:
 claims 1, 4, 9, 13, 16, and 20 under 35 U.S.C. § 102(b) as anticipated
by Peers-Trevarton;
1

 claims 1, 4, 13, 16, 24-26, and 29-31 under 35 U.S.C. § 102(b) as
anticipated by Hawkins;
2
and
 claims 9, 20, 28, and 33 under 35 U.S.C. § 102(b) as anticipated by or,
in the alternative, under 35 U.S.C. § 103(a) as obvious over Hawkins.

I.
The Examiner’s position is that Peers-Trevarton’s sealing ring 143 is a
retention edge on a lead connector, with connector sleeve fingers 81 and 82
acting as a retention element that retains the lead connector within the
connector sleeve. (Ans. 4.)
Appellants note that the claims “specifically require that the retention
element: a) engages a laterally extending surface of the connector edge; and
b) retains the lead connector,” and contend that the rejection’s assessment of
“retention surface” and “retention edge” as met by Peers-Trevarton’s device
is incorrect. (App. Br. 8-9.) Because Peers-Trevarton’s fingers 81 and 82
are shown as engaging the longitudinally extending surface of terminal 32
(see Peers-Trevarton, Fig. 3), we agree with Appellants that it was not
reasonable for the Examiner to find that fingers 81 and 82 are retention

1
Charles A. Peers-Trevarton, US 4,583,543, April 22, 1986.
2
Rodney J. Hawkins, US 5,730,628, March 24, 1998.
Appeal 2011-012371
Application 10/635,166

4
elements that engage a laterally extending edge surface of ring 143 and
retain the lead connector. The anticipation rejection over Peers-Trevarton is
therefore reversed.

II.
The Examiner’s position is that Hawkins’ connector sleeve contains
“contact element, spring member 38, to engage with the connector element
30,” and “the [E]xaminer considers the leaf spring member 60 to be the
retention element extending into the sleeve lumen to mechanically
engage with retention edge 32 on the electrical lead connector.” (Ans. 5.)
Appellants contend that (i) “contact [38] is not disclosed as
redeploying to its initial position to engage the lead connector;” and (ii) “the
multi-beam contact of Hawkins does not mechanically engage a laterally
extending edge of the lead connector as required by all claims.” (App. Br.
10.) Because Hawkins’ spring element contacts a longitudinally extending
surface rather than one extending laterally, and because the spring element
must remain deflected to accommodate the connector element’s presence in
the lumen, we agree that the evidence supports both of Appellants’ points,
and not the rejection. On this evidence, the anticipation rejections over
Hawkins cannot be affirmed. The alternative obviousness rejection over
Hawkins (Ans. 6) did not make up the deficit and must also be reversed.

SUMMARY
We reverse the rejection of claims 1, 4, 9, 13, 16, and 20 under
35 U.S.C. § 102(b) as anticipated by Peers-Trevarton.
Appeal 2011-012371
Application 10/635,166

5
We reverse the rejection of claims 1, 4, 13, 16, 24-26, and 29-31
under 35 U.S.C. § 102(b) as anticipated by Hawkins.
We reverse the rejection of claims 9, 20, 28, and 33 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Hawkins.

REVERSED

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