Ex Parte Somogyi et al

Patent Trials and Appeals Board

Apr 22, 2019

14161544 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/161,544 01/22/2014
36802 7590 04/24/2019
PACESETTER, INC.
15900 VALLEY VIEW COURT
SYLMAR, CA 91392-9221
FIRST NAMED INVENTOR
Zoltan Somogyi
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.
Al4Pl002 4959
EXAMINER
GRAND, JENNIFER LEIGH-STEW AR
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/24/2019 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
asjm_Patents@abbott.com
estella.pineiro@abbott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ZOLTAN SOMOGYI and GENE A. BORNZIN
Appeal 2018-005915
Application 14/161,544
Technology Center 3700
Before WILLIAM A. CAPP, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Pacesetter, Inc. is the Applicant and real party in interest. Appeal Br. 3.
Appeal 2018-005915
Application 14/161,544
THE INVENTION
Appellants' invention relates to an electrode for deep brain
stimulation. Spec. ,r 1. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. An electrode structure comprising:
a hollow cylindrical body comprising an electrically
conductive metal having an inner surface and an outer surface,
wherein:
the body including a plurality of holes extending
longitudinally along at least a part of the hollow cylindrical
body, such that a middle section and end sections of the hollow
cylindrical body are delimited, at least in part, by the holes;
wherein
the inner surface of the end sections has an interior
diameter that is greater than an interior diameter of the inner
surface of the middle section;
the middle section comprises a plurality of electrode
elements separated by the holes; and
each electrode element comprises a top surface and two
side edges.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Hegland
Addis
Kokones
Pianca
US 2006/0168805 Al
US 2008/0114230 Al
US 2009/0204193 Al
US 2011/0078900 Al
Aug. 3, 2006
May 15, 2008
Aug. 13, 2009
Apr. 7, 2011
The following rejections are before us for review:
1. Claims 1 and 5-8 are rejected under 35 U.S.C. § I02(b) as being
anticipated by Pianca.
2. Claims 1-7, 9-11, 13, and 14 are rejected under 35 U.S.C. § I03(a)
as being unpatentable over Hegland and Addis.
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Appeal 2018-005915
Application 14/161,544
3. Claims 8 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hegland, Addis, and Kokones.
Claim 1
OPINION
Anticipation of Claims 1 and 5---8
by Pianca
The Examiner finds that Pianca discloses each limitation of claim 1.
Final Action 2-3.
Appellants argue that Pianca fails to disclose a hollow cylindrical
body with a plurality of holes as claimed. Appeal Br. 7. Appellants contend
that Pianca's cutouts do not constitute holes as claimed Id. at 7-8.
Appellants argue that the Examiner takes inconsistent positions as to the
segmented electrodes 702 of Pianca being attached to carrier 706. Id.
In response, the Examiner furnishes annotated versions of Figures 7 A
and 7B of Pianca that show the structure in Pianca corresponding to the
claimed cylindrical body, electrodes, and holes. Ans. 8. The Examiner,
furthermore, disputes Appellants' accusation that the rejection is internally
inconsistent. Id. at 12.
Pianca is directed to a method of making a lead for deep brain
stimulation. Pianca ,r,r 3-5. Pianca's device has multiple segmented
electrodes formed on a cylindrical body. Id. ,r,r 5-7. Pianca discloses
multiple electrodes 702 attached to a carrier 706. Id. ,r 55. During
manufacture, the carrier is formed into a cylinder. Id. Eventually,
carrier 706 is removed, leaving the electrodes disposed in the lead body. Id.
i167, Fig. 7E.
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Appeal 2018-005915
Application 14/161,544
Appellants' arguments about the segmented electrodes 702 of Pianca
being attached to carrier 706 are off the mark. Pianca is directed to a
method of manufacture. The carrier is merely involved in an intermediate
manufacturing step and is removed before assembly is complete. Pianca,
,r 67, Fig. 6 (Remove Carrier 610). Appellants fail to distinguish the final
structure produced by the method of Pianca from the claimed invention.
Appellants' arguments do not apprise us of Examiner error. We
sustain the Examiner's anticipation rejection of claim 1.
Claims 5-8
Claims 5-8 depend from claim 1 and are not separately argued.
Claims App. We sustain the Examiner's rejection of claims 5-8. See 37
C.F.R. § 4I.37(c)(l)(iv) (failure to separately argue claims).
Unpatentability of Claims 1-7, 9-11, 13, and 14
over Hegland and Addis
Claims 1 and 9
Appellants argue claims 1 and 9 together. Appeal Br. 9-10. We
select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Hegland discloses the invention substantially
as claimed, except for the interior diameter limitations for which the
Examiner relies on Addis. Final Action 3--4. The Examiner concludes that
it would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Hegland by the teachings of Addis to achieve the
claimed invention. Id. at 4. According to the Examiner, a person of
ordinary skill in the art would have done this to provide an interior thickness
to support the wiring and circuitry within the electrode structure. Id.
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Appeal 2018-005915
Application 14/161,544
Appellants argue that Addis is fabricated from a dielectric material,
which is necessary for proper operation of its segmented electrodes. Appeal
Br. 10 (citing Addis ,r 28). In response, the Examiner points out that Addis's
hollow cylindrical body comprises an electrically conductive metal. Ans. 14
( citing Addis ,r 59).
Appellants' argument is without merit. The passage from Addis cited
in the Appeal Brief about dielectric material specifically refers to "certain
embodiments." Appeal Br. 10. The Examiner's reliance on paragraph 59
shows that Addis contemplates embodiments other than those of
paragraph 28. Ans. 14.
Appellants next argue that Addis teaches away from the proposed
combination. Appeal Br. 10. This argument is not persuasive. "[I]n
general, a reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant." In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). However, the "mere disclosure of alternative designs
does not teach away." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012).
Rather, teaching away requires "clear discouragement" from implementing a
technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017).
Here, Appellants have not directed us to any language in Addis that
criticizes, discredits, or otherwise discourages investigation into fabricating
the cylindrical body from an electrically conductive metal.
We have considered Appellants' other arguments and find none that
warrant reversal of the rejection. We sustain the Examiner's unpatentability
rejection of claims 1 and 9.
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Appeal 2018-005915
Application 14/161,544
Claims 2-7, 10, 11, 13, and 14
Claims 2-7, 10, 11, 13, and 14 depend from either claim 1 or claim 9
and are not separately argued. Claims App. We sustain the Examiner's
rejection of claims 2-7, 10, 11, 13, and 14. 37 C.F.R. § 4I.37(c)(l)(iv).
Unpatentability of Claims 8 and 12
over Hegland, Addis, and Kokones
Claim 8 depends from claim 1 and claim 12 depends from claim 9.
Claims App. These claims are not separately argued. Appeal Br. 11. We
sustain the Examiner's rejection of claims 8 and 12. 37 C.F.R. § 4I.37(c).
DECISION
The decision of the Examiner to reject claims 1 and 5-8 under
Section 102 is affirmed.
The decision of the Examiner to reject claims 1-14 under Section 103
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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