Ex Parte Struve

Patent Trial and Appeal Board

Feb 10, 2017

12938113 (P.T.A.B. Feb. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/938,113 11/02/2010 Roger Struve 387684 2802
7590
Faegre Baker Daniels LLP
PATENT DOCKETING - INTELLECTUAL PROPERTY (32469)
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
02/14/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER STRUVE
Appeal 2015-0016211
Application 12/938,113
Technology Center 3700
Before JOSEPH A. FISCHETTI, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—12 under 35 U.S.C. § 103(a) as unpatentable over
Bottomley.3 We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed Aug.
4, 2014), Reply Brief (“Reply Br.,” filed Dec. 2, 2014), and the Examiner’s
Answer (“Ans.,” mailed Oct. 3, 2014).
2 Appellant identifies the real party in interest as “Cardiac Pacemakers, Inc.”
(Appeal Br. 3).
3 Bottomley et al., US 2008/0262584 Al, pub. Oct. 23, 2008.
Appeal 2015-001621
Application 12/938,113
CLAIMED INVENTION
Claims 1 and 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal (Appeal Br.
19, Claims App.).
1. An implantable medical device lead comprising:
a proximal connector;
an inner conductor assembly coupled to a first electrode
at a distal end of the inner conductor assembly, the inner
conductor assembly comprising one or more filars arranged in a
plurality of serially connected current suppression modules,
each current suppression module having a tri-layer
configuration comprising an inner first coil of the one or more
filars wound in a first winding direction, an intermediate second
coil of the one or more filars coaxial with the first winding and
wound in a second winding direction opposite the first winding
direction, and an outer third coil of the one or more filars
coaxial with the first and second windings and wound in the
first winding direction; and
an outer conductive coil extending coaxially over the
inner conductor assembly, the outer conductive coil having a
proximal end coupled to the proximal connector and a distal
end coupled to a second electrode and including one or more
filars wound in the first winding direction from the proximal
end to the distal end.
ANALYSIS
We are persuaded by Appellant’s arguments that the Examiner has
failed to establish a prima facie case of obviousness as to independent claims
1 and 7 (Appeal Br. 10-14 and Reply Br. 1^4).
In rejecting claims 1 and 7 as obvious over Bottomley, the Examiner
acknowledges that Bottomley does not disclose which current suppression
module (“CSM”) 8m shown in Figures 21A-C and 22A—C is to be used in
the lead shown in Figure 37, but the Examiner determines “it would be
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Appeal 2015-001621
Application 12/938,113
obvious that any of these CSMs could be used in the embodiment shown in
figure 37.” Ans. 2. For instance, the Examiner finds the CSM 8m shown in
Figure 21A discloses an inner conductor assembly as claimed. Id. at 2—
3. Furthermore, the Examiner acknowledges that Bottomley does not
disclose “that the outer conductive coil 3j turns in the same winding
direction as the first winding direction”, as required by claim 1. Id. at
3. However, the Examiner reasons:
Since figures 21 A and 22A are silent as to which end is the
proximal end and which end is the distal end of the CSM, it is
unclear exactly how the CSM would be aligned in regards to
the proximal and distal ends of the embodiment shown in figure
37. However, seeing as that there are only two options for
placing the CSMs in the embodiment of figure 37, one of
ordinary skill in the art would find it obvious to place the CSM
in both directions (i.e., try one end of the CSM as the distal end,
and then flip it and use it as the proximal end) in order to
determine which configuration produced the best results. One
of these two possible configurations would obviously result in
the outer conductive assembly being wound in the same
direction as the first winding direction of the CSM 8m.
Therefore, based on the disclosure of Bottomley, it would have
been obvious to one of ordinary skill in the art at the time of the
appellant's invention to try the CSM 8m's shown in figures 21A
and 22A in the embodiment of figure 37, as suggested in par.
0232. Seeing as there are only a finite number of ways for the
CSMs to be inserted in the embodiment (only 2, as described
above) it would have been obvious to try both directions of the
CSMs in the embodiment of figure 37 as a person with ordinary
skill has good reason to pursue the known options within his or
her technical grasp. If this leads to the anticipated success, it is
likely the product not of innovation, but or ordinary skill and
common sense.
Id. at 3^4.
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Appeal 2015-001621
Application 12/938,113
There clearly are cases where minor changes in the location and/or
orientation of elements to arrive at the claimed invention may be an obvious
matter of design choice. For example, “when a patent simply arranges old
elements with each performing the same function it had been known to
perform and yields no more than one would expect from such an
arrangement, the combination is obvious.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007).” (citations and emphasis omitted)); see also In re
Japikse, 181 F.2d 1019, 1031 (CCPA 1950) (The Board did not err in
holding “there would be no invention in shifting the starting switch disclosed
by Cannon to a different position since the operation of the device would not
thereby be modified.”). However, simply stating that it would have been
obvious to rearrange or re-orient elements, without more, is insufficient to
support a conclusion of obviousness.
The legal conclusion of obviousness must be based on the particular
facts of each case, not on per se rules. In re Ochiai, 71 F.3d 1565, 1571
(Fed. Cir. 1995). Indeed, as the Court in KSR made clear, “‘[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” KSR,
550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We agree with Appellant that the Examiner does not provide the
requisite findings to support an “obvious to try” rationale as applied to
claims 1 and 7 because “Bottomley does not disclose that winding
orientation is a relevant variable and therefore one having ordinary skill in
the art would not have sought to experiment with different winding
orientations beyond what is already disclosed in Bottomley.” Appeal Br. 13.
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Appeal 2015-001621
Application 12/938,113
A proper finding of obviousness based on an “obvious to try” rationale
requires, inter alia, a showing that, at the time Appellant’s invention was
filed, (1) there was a recognized problem and a design need or market
pressure to solve the problem; (2) there was a finite number of identified,
predictable solutions; and (3) one of ordinary skill would have had good
reason to pursue the known options within his or her technical grasp, with a
reasonable expectation of success. See KSR, 550 U.S. at 421. The Examiner
has not established that, at the time of Appellant’s invention, there was a
recognized problem, relating to reducing MRI heating in a lead, for which
orienting the relative winding directions of coils was one of a finite number
of identified, predictable solutions. The Examiner has not pointed to
anything in Bottomley that suggests re-orienting the relative winding
directions of coil leads to any solution, let alone one that is predictable.
The Examiner’s assertion that it is obvious to “try[] both ends as the
proximal and distal end and determining which configuration produces
better results” (Ans. 6) does not account for Bottomley giving no indication
of which parameters were critical or no direction as to which of many
possible choices is likely to be successful. Appellant argues that “[t]he
reduced heating due to common winding orientation is an unexpected
benefit that one having ordinary skill in the art would not have anticipated”
or “even thought to assess whether the coil winding direction makes a
difference in MRI heating.” Appeal Br. 14 (citing Spec. 147). Appellant’s
Specification describes testing the effect of the outer conductive coil on
heating at the electrode by changing the outer coil winding direction. See
Spec. 147. Appellant’s testing “demonstrated that, to minimize the
interaction between the outer conductive coil 66 and inner conductive
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Application 12/938,113
assembly 70 in an MRI environment, the outer conductive coil 66 is to be
wound in the same direction as the [inner first and outer third] coils 82 and
86.” Id. 148. We are persuaded that “Bottomley does not propose finding
‘better results’ from relative winding directions... [because t]he idea of
finding ‘better results’ by experimenting with the winding direction comes
not from Bottomley but rather from the Examiner using hindsight
reasoning.” Reply Br. 3^4 (filed Dec. 2. 2014). The Examiner has the
initial duty of supplying the factual basis for supporting a rejection, without
“resort[ing] to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies” in the cited reference. In re Warner,
379 F.2d 1011, 1017 (CCPA 1967).
In sum, the Examiner fails to establish an evidentiary basis on this
record to support a conclusion that it would have been obvious to modify
Bottomley to arrive at the claimed invention. Accordingly, we do not
sustain the rejection of independent claims 1 and 7 as obvious over
Bottomley. For the same reasons, we do not sustain the rejections of claims
2—6 and 8—12 dependent thereon. Cf. In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) (“dependent claims are nonobvious if the independent
claims from which they depend are nonob vious”).
DECISION
The Examiner’s decision to reject claims 1—12 is reversed.
REVERSED
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