Ex Parte Zart et al

Patent Trial and Appeal Board

Jan 25, 2018

12841006 (P.T.A.B. Jan. 25, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/841,006 07/21/2010 Bryan J. Zart P0009476.13 1187
27581 7590 01/29/2018
Medtronic, Inc. (CRDM)
710 MEDTRONIC PARKWAY NE
MS: LC340 Legal Patents
MINNEAPOLIS, MN 55432-9924
EXAMINER
HELLER, TAMMIE K
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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):
medtronic_crdm_docketing @ c ardinal-ip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN J. ZART, BRIAN R. BURWICK,
ANDREW J. RIES, JOHN E. NICHOLSON, JAY LAHTI, and
GREGORY A. THEIS
Appeal 2016-002570
Application 12/841,006
Technology Center 3700
Before: CHARLES N. GREENHUT, PATRICK R. SCANLON, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, 69, 74, 77, 78.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The Examiner corrects the rejected claim listing in the Answer. Ans. 3; see
App. Br 19.
Appeal 2016-002570
Application 12/841,006
CLAIMED SUBJECT MATTER
The claims are directed to a connector assembly for an implantable
medical device and process for making. Claim 1, reproduced below, with
emphasis added, is illustrative of the claimed subject matter:
1. A method of fabricating a modular header for providing
electrical connections between an array of feed-through pins
extending through a wall of a hermetically sealed enclosure of an
implantable medical device and lead connector receptacles
within a modular header assembled to said device comprising:
(a) providing a pre-formed molded header module having
paths therein to accept and incorporate a set of flexible
conductors and connector blocks associated with lead connector
receptacles;
(b) providing a separate set of intermediate conjoined
flexible conductors each having a free end and a fixed end,
wherein the fixed ends of the flexible conductors are connected
to a common element and assembling said set of conductors into
said paths in said pre-formed molded header module attaching
the free ends thereof to corresponding connector blocks provided
in said molded header module;
(c) performing an over-molding operation to incorporate
and hermetically seal said conductors into said header structure;
(d) removing said common element to provide an array of
spaced connectors configured and positioned to match and mate
with said array of feed-through pins when said header is
assembled to a compatible corresponding hermetically sealed
enclosure;
(e) assembling said header module to said hermetically
sealed enclosure and connecting said flexible conductors to said
feed-through pins; and
(f) backfilling any open interface volume between said
header module and said hermetically sealed enclosure after
connecting said flexible conductors to said feed-through pins.
2
Appeal 2016-002570
Application 12/841,006
REJECTIONS
Claims 1,3,4, 69, 74, 77, and 78 are rejected under 35 U.S.C. § 112,
first paragraph.
Claims 1,3,4 and 69 are rejected under 35 U.S.C. § 102(b) as
anticipated by either Spadgenske (US 7,274,963 B2; issued Sept. 25, 2007)
or Deininger (US 7,537,474 B2; issued May 26, 2009); and also under
§ 102(f) because Appellants did not invent the subject matter claimed.
OPINION
The Examiner’s rejection under § 112 is premised on the lack of
support for the recited “common element” and its removal. Final Act. 13-15.
The language was introduced in order to provoke an interference with
Spadgenske. App. Br. 7. Both the Examiner and Appellants are considering
the relevant embodiment to be that depicted in Figures 5 and 7. App. Br. 8;
Ans. 4.
The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required to “recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas Cathlnc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). While there is no in haec verba requirement,
newly added claim limitations must be supported in the specification
through express, implicit, or inherent disclosure. The fundamental factual
inquiry is whether the specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, applicant was in
3
Appeal 2016-002570
Application 12/841,006
possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935
F.2d at 1563-64.
Paragraph 39 of the Specification, in relevant part, provides:
Circuit member 40 includes multiple conductive traces or finger
elements 42 through 52, each extending to a respective connector
pads 53 through 57. When the circuit member 40 is initially
coupled to core member 2, connector pads may be electrically
and mechanically joined to make the assembly process more
efficient.
According to paragraph 49, the embodiment depicted in Figure 5 is
similar with “like features of circuit member 40b as compared to circuit
member 40 of Figures 1 through 4 [being] designated with like numeric
identifiers including an additional suffix.”
Paragraph 63, in relevant part, provides:
After removal from the mold, the connector pads of the circuit
member 40 may be separated, if necessary, to achieve electrical
isolation, as may be performed by cutting away the intervening
conductive traces. The pads may then be soldered or welded to
respective connectors of an implantable medical device such as
a pacemaker or cardioverter/defibrillator, and overlaid with a
medical adhesive to maintain electrical isolation in the
connection area. It may be noted that if individual circuit
elements are utilized in place of circuit member 40 or 40b, the
step of removing the intervening conductive traces between
finger elements may be eliminated.
Figure 5 of the present application, depicting the mechanically joined
conductive traces, is reproduced below:
4
Appeal 2016-002570
Application 12/841,006
As is apparent from Figure 5, when viewed in light of the portions of
the Specification reproduced above, all of traces 42b-52b are joined to the
same element, centrally located in Figure 5 and having apertures 90, 92.
Although this element lacks a reference numeral and is not referred to in the
Specification by any particular name, we see no reason why, in light of the
5
Appeal 2016-002570
Application 12/841,006
disclosure, Appellants are precluded from referring to this structure in the
claims as a “common element.” The Examiner has not established that the
term “common element” is expressly defined anywhere in the record, or
carries a particular meaning in the art. See, e.g., Ans. 9 (asserting a more
narrow meaning of “common element”). The fact that the depicted element
at the joined ends of the traces is common to all of those traces suffices to
reasonably render it within the broadest reasonable interpretation of the
phrase, “common element.”
According to paragraph 63, electrical isolation is achieved by
separating the connector pads.2 This can be achieved by “cutting away the
intervening conductive traces.” Considering Figure 5, the most, if not the
only, apparent way to cut away the intervening traces while maintaining and
isolating the pads is to sever each trace at the location between the pads and
the common element. Performing this operation would mean that the
common element, as depicted below, is removed from the conductive traces
and, thus, the header:
2 Not enumerated in Figures 5 and 7 but presumably 53b-57b according to
the convention described in paragraph 49, above.
6
Appeal 2016-002570
Application 12/841,006
Thus, at the time of filing, Appellants’ Specification adequately
demonstrated possession of the subject matter now defined by claim 1. The
Examiner does not identify, and we are not apprised of, any reason to treat
the similar language in the other rejected claims any differently.
Accordingly, we do not sustain the Examiner’s rejection under § 112, first
paragraph. Our resolution of this issue is dispositive as to the remaining
rejections under § 102. App. Br. 17-18.
DECISION
The Examiner’s rejections are reversed.
REVERSED
7