Ex parte Taylor et al.

Board of Patent Appeals and Interferences

Feb 9, 1998

08047132 (B.P.A.I. Feb. 9, 1998)

Application for patent filed April 9, 1993. According to1
appellants, this application is a continuation-in-part of
Application 07/879,252, filed May 1, 1992, now abandoned; which
is a continuation-in-part of Application 07/419,881, filed
October 11, 1989, now abandoned.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLIAM J. TAYLOR, JOSEPH F. LESSAR,
LOUIS E. HALPERIN and ROBERT E. KRASKA
________________
Appeal No. 95-5093
Application 08/047,1321
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and WARREN, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and
3-7, all the claims remaining in the present application. Claim
1 is illustrative:
Appeal No. 95-5093
Application 08/047,132
-2-
1. A device for implantation in a human body in contact
with body fluids comprising:
a container having an opening between the exterior and
interior of said container;
an electrical terminal extending from the interior of said
container through the opening in said container to the exterior
of said container where it is subject to contact with body
fluids, said electrical terminal consisting of a material
selected from the group consisting of platinum, platinum-iridium
alloys, titanium, niobium clad with titanium to a thickness in
the range of 50 to 300 microinches, and tantalum clad with
titanium to a thickness in the range of 50 to 300 microinches;
a glass insulator positioned around a portion of said
terminal in sealing engagement with said terminal and said
container, said glass insulator having a chemical composition
consisting essentially of about 20 mole % A1 O , about 20 mole %2 3
CaO, between about 10 mole % and 15 mole % SiO , between about 2
25 mole % and 40 mole % B O , between about 0 mole % and 2 3
20 mole % MgO between about 0 mole % and 20 mole % BaO and
between about 0 mole % and 10 mole % SrO; and
a sleeve or header attached to said container at said
opening, said sleeve or header positioned between said glass
insulator and said container around a portion of said glass
insulator for receiving same in sealing engagement therewith,
said sleeve or header comprising a metal selected from the group
consisting of titanium and titanium alloys.
The examiner relies upon the following references as
evidence of obviousness:
Kyle 4,421,947 Dec. 20, 1983
Taylor et al. (Taylor) 4,556,613 Dec. 3, 1985
Kraska et al. (Kraska) 4,678,868 Jul. 7, 1987
Randall D. Watkins et al. (Watkins), Chemical Abstracts
108:115770s
Watkins, Chemical Abstracts 108:59384e
Appeal No. 95-5093
Application 08/047,132
-3-
Watkins, "Development of CABAL glasses for Use in Lithium
Ambient-Temperature Batteries," abstract, SAND--87-0393
Appellants' claimed invention is directed to an electrical
device that is designed for implantation in a human body. The
device comprises, inter alia, an electrical terminal consisting
of a material, such as platinum, which extends through an opening
in a container, and a glass insulator in sealing engagement with
a portion of said terminal and said container. The glass
insulator has a chemical composition consisting essentially of
Al O , CaO, B O and SiO . The glass composition may also contain2 3 2 3 2
MgO, BaO and SrO. The SiO is present in an amount between about 2
10 mole % and 15 mole %.
Appealed claims 1 and 3-7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Taylor in view of Kyle, three
Watkins abstracts and Kraska.
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellants that the examiner
has failed to establish a prima facie case of obviousness for the
claimed subject matter. Accordingly, we will not sustain the
examiner's rejection.
The examiner states at page 5 of the Answer that "[t]he
references do not disclose the exact glass composition used as
the insulating material." We understand this statement to be
Appeal No. 95-5093
Application 08/047,132
CABAL 12 is the glass composition disclosed in the three2
Watkins abstracts.
-4-
applicable only to the Taylor and Kyle references discussed
immediately before the statement. We say this because the
examiner later states at page 6 of the Answer that "the artisan
recognizes that CABAL 12 is the trade name for the glass which
the applicants are claiming by their generic compositions in the
instant claims." The examiner also states at page 9 of the2
Answer that CABAL 12 is the same as the instant glass (see first
full paragraph). According to the examiner, it would have been
obvious for one of ordinary skill in the art to employ the glass
sealant CABAL 12 in manufacturing a device of the type claimed.
The fundamental error in the examiner's position is that
CABAL 12 is not disclosed as containing any SiO , let alone the2
10-15 mole % required by the appealed claims. This point is
urged by appellants at page 12 of the principal Brief, first
paragraph. Accordingly, since none of the applied references
teach a glass insulator of the claimed composition, and the
examiner has not established on this record why one of ordinary
skill in the art would have found it obvious to modify the CABAL
12 composition of Watkins by including 10-15 mole % of SiO in2
making a device for implantation in a human body, we are
constrained to conclude that the examiner has not met her initial
Appeal No. 95-5093
Application 08/047,132
-5-
burden of establishing a prima facie case of obviousness for the
claimed subject matter.
Accordingly, the examiner's decision rejecting the appealed
claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 95-5093
Application 08/047,132
-6-
Medtronic, Inc.
7000 Central Avenue N.E.
Minneapolis, MN 55432