DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 2, 7-8, 10-13, 15-16 & 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 26, 2026.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4-9 & 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ries et al. (US 2007/0111587) in view of Nakanishi et al. (US 2004/0023107).
Claim 1.
An implantable medical device
Ries et al. discloses an implantable medical device 20 ([0019], Fig 1).
An energy-storage component and circuit board having supply and ground connections
Ries et al. discloses housing 22 containing a power supply associated electronic circuitry for operating the implantable device ([0019]; Fig 1).
First and second conductive wires:
Ries et al. discloses conductive interconnections, including ribbon 50 and conductive traces/fingers 52-62, electrically coupling components of the implantable-device circuitry ([0020], [0023]-[0024]; Fig. 3).
Ries et al. does not expressly disclose that the energy-storage component has only one output pin serving as the positive terminal and a metal case serving as the negative terminal.
Nakanishi et al. discloses the missing terminal architecture:
Nakanishi et al. discloses a battery comprising an electrode unit 4 disposed within a metal battery can 5 and a discrete terminal 8 ([0078], [0084]-[0088]; Figs. 1-3). Nakanishi et al. further expressly teaches reversing the disclosed polarity such that terminal 8 becomes the positive terminal and the negative terminal is formed by battery can 5 ([0114]). Thus, under the broadest reasonable interpretation, terminal 8 constitutes the battery’s only discrete output pin, while battery can 5 constitutes the negative terminal.
It would have been obvious to one of ordinary in the art to implement the power supply of Ries et al. using Nakanishi’s expressly disclosed alternative terminal configuration, with the discrete terminal serving as the positive terminal and the conductive battery can serving as the negative terminal. This modification represents the predictable use of a known battery-terminal arrangement in the batter-powered implantable device of Ries et al. and would have yielded the predictable result of supplying electrical power using the terminal and conductive case as the respective battery poles.
In the resulting combination, it would have also been obvious to connect the positive terminal 8 to the supply connection of Ries’s electronic circuitry and the negative battery can 5 to its ground connection through respective conductive wires. Connecting the positive battery pole to the circuit supply and the negative pole to circuit ground constitutes the ordinary and predictable electrical arrangement necessary to energize the circuitry. The proposed modification merely applies Nakanishi’s known case-negative battery configuration to Ries’s known battery-powered implantable medical device according to its established electrical function, producing no unexpected result. See KSR Int’l Co. v. Teleflex Inc, 550 U.S. 398, 416-18 (2007).
Accordingly Ries in view of Nakanishi teaches or renders obvious each limitation of claim 1.
Claim 4.
Ries et al. in view of Nakanishi et al. teaches the device of claim 1 as set forth above.
A metal case having a flat surface:
Nakanishi et al. discloses battery can 5 having lid 53, which provides a flat metal case surface ([0078], [0099]-[0103]; Fig. 1 and 10-11).
A metal ribbon directly laser-bonded to the flat surface:
Nakanishi et al. discloses electrically conductive connecting plate 55a laser-welded directly to the surface of case lid 53 ([0103]; Fig 11).
Under BRI, Nakanishi’s flat conductive connecting plate constitutes a metal ribbon because it is flat, elongated conductive member used to provide an electrical connection.
It would have been obvious to use Nakanishi’s laser-welded conductive plate as the ground conductor connecting the negative battery case to Ries’s circuit ground because it applies a known electrical-joining technique to the corresponding case-terminal connection, providing a secure, low-resistance electrical connection.
Claim 5.
Ries et al. in view of Nakanishi et al. teaches the device of claim 1 as set forth above.
A metal case having a curved surface:
Nakanishi et al. discloses cylindrical battery can 5, including cylinder 51, which necessarily has a curved external surface ([0078]; Fig 1)
A metal ribbon laser-bonded directly to the curved case surface:
Nakanishi et al. teaches laser-welding electrically conductive connecting members to battery-case and terminal structures ([0103]-[0106]).
It would have been obvious to laser-bond the ground ribbon directly to an accessible curved surface of cylindrical battery can 5 rather than its flat lid. The flat lid and curved cylindrical wall are known alternative surfaces of the same conductive negative-terminal case, and selecting an accessible bonding location would have been a routine design choice producing the predictable electrical connection. The modification merely applies Nakanishi’s known laser-welding technique to another suitable surface of the same conductive battery case. See KSR, 550 U.S. at 417.
Claim 9.
Ries et al. teaches making an implantable medical device having electronic circuitry and conductive ribbons/traces providing electrical connections thereto ([0019]-[0024]; Figs. 1 & 3).
Nakanishi teaches a battery configuration in which the sole discrete terminal 8 serves as the positive terminal and metal battery can 5 serves as the negative terminal [0114].
Nakanishi et al. further teaches laser welding conductive members to battery-terminal and case structures ([0092], [0096], [0103]-[0107]).
It would have been obvious to connect Ries’s circuit supply to Nakanishi’s positive terminal and circuit ground to its negative metal case, and to form those connections by Nakanishi’s laser-welding technique, as the predictable application of a known joining method to corresponding battery electrical connections to provide secure, low-resistance connections.
Allowable Subject Matter
Claims 3, 6, 14 & 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art of recording, including Ries, Nakanishi et al. and Litzke, alone or in combination, fail to teach or suggest:
A signal-positive-pin, case-negative defibrillation capacitor, as required by claim 3 and 17; or
A ground-connected metal ribbon laser-bonded directly to the claimed flat indented surface of the negative metal case, as required by claims 6 and 14.
Accordingly, claims 3, 6 and 14 would be allowable if rewritten in independent form and claim 17 is allowable.
Response to Arguments
The applicant’s arguments are persuasive to the extend that Ries et al. and Litzke do not disclose the amended single-positive-pin, case-negative energy storage architecture. Accordingly, the prior rejections are withdrawn.
The arguments do not overcome the new rejections of claims 1, 4-5 & 9 because the modifying reference, Nakanishi et al., teaches a discrete positive terminal and a metal battery can forming the negative terminal, as well as laser-welded battery connections ([0103]-[0107], [0114]). The proposed combination and rationale are addressed in the respective rejections.
The arguments concerning claims 3, 6, 14 and 17 are persuasive; those claims contain allowable subject matter as indicated above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE F JOHNSON whose telephone number is (571)270-5040. The examiner can normally be reached Monday-Friday 8:00am-5:00pm EST.
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/NICOLE F JOHNSON/ Primary Examiner, Art Unit 3796
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