Ex Parte Holt

Patent Trial and Appeal Board

Jan 31, 2019

13796607 (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796,607 03/12/2013
32642 7590 02/04/2019
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
FIRST NAMED INVENTOR
Dolly Jeanne Holt
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.
47974/2.2 2354
EXAMINER
TEMPLETON, CHRISTOPHER L
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
patlaw@stoel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOLLY JEANNE HOLT
Appeal2018-004052
Application 13/796,607
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dolly Jeanne Holt ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision to reject claims 1-6, 8, 9, 14, 15, 17, 18, 20,
30, 32, and 34--43. Claims 7, 10-13, 16, 19, 21-29, 31, and 33 have been
canceled. Claims App. 3-5. 1 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 A Response to Notification of Non-Compliant Appeal Brief was filed to
submit a corrected Claims Appendix ("Claims App."), filed Apr. 3, 2017. We
rely on the claims as presented in the amended Claims Appendix.
Appeal2018-004052
Application 13/796,607
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to devices and methods to support
weak tissue or for moving two regions of tissue towards each other to
reconnect or support tissue that is separated or at risk of separation." Spec.
,r 2, Figs. IA-IC. Claims 1 and 38 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A device for treating wounded, separated, and/ or partially
separated elongate tissue of a patient, the device comprising:
a coil comprising a plurality of interconnected turns in
series, the coil formed of an elongate coil member
of biocompatible material, the coil member having
a first end and a second end and configured in a
spiral pattern to form the series of interconnected
turns of the coil and define a lumen through the coil,
the lumen being open at both ends and configured
to receive the elongate tissue to be repaired, the coil
being extendable to increase a distance between
adjacent turns of the plurality of turns and increase
a length of the coil,
wherein-
when the coil is in a relaxed state, each tum of the
plurality of turns of the coil has a
corresponding first diameter and is
configured to encircle and engage the
elongate tissue,
when the coil is in an extended state, each tum of
the plurality of turns has a corresponding
second diameter smaller than the
corresponding first diameter and 1s
configured to more tightly engage the
elongate tissue than when the coil is in the
relaxed state,
2
Appeal2018-004052
Application 13/796,607
the coil is configured to engage the elongate tissue
continuously as it transforms from the
relaxed state to the extended state, and
the coil is configured to distribute axial tensile stress
along tissue contact points, and
a first subset of the interconnected turns of the coil
at the first end of the coil is configured to
engage a first portion of the elongate tissue
and a second subset of the interconnected
turns at the second end of the coil is
configured to engage a second portion of the
elongate tissue such that an axial tensile
stress along the elongate tissue pulls the first
and second subsets in an axial direction away
from one another and extends the coil, and
thereby changing each tum of the plurality of
turns from the relaxed state to the extended
state to achieve the second diameter to more
tightly engage the elongate tissue.
THE REJECTI0NS 2
I. Claims 1, 2, 4, 20, 34--38, and 40-43 stand rejected under 35 U.S.C.
§ I02(b) as anticipated by Shaked (US 2008/0228146 Al, published Sept.
18, 2008). 3
2 The Examiner states that Appellant "has overcome the following
rejection(s): the 35 U.S.C. 112 first and second paragraph rejections and the
Claim Objections." Advisory Action 2, dated Oct. 7, 2016. Thus, the
objection of claims 1, 20, 36, 38, and 42, and the rejections of claims 1-6, 8,
9, 14, 15, 17, 18, 20, 30, 32, and 34--43 under 35 U.S.C. § 112, first paragraph
and second paragraph, are not before us on appeal. See Final Office Action
2--4 ("Final Act."), dated June 9, 2016.
3 The Examiner includes canceled claim 19 in the heading of Rejections I and
II. We consider this an inadvertent typographical error. See Final Act. 4, 7.
3
Appeal2018-004052
Application 13/796,607
II. Claims 1-5, 20, 34--38, and 40-43 stand rejected under 35 U.S.C.
§ I02(e) as anticipated by Bills (US 2013/0013065 Al, published Jan. 10,
2013).
III. Claims 6, 17, 18, 30, and 39 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Bills and Allen (US 2004/0260384 Al, published Dec.
23, 2004).
IV. Claims 8, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bills and Talja (US 6,171,338 Bl, issued Jan. 9, 2001).
V. Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Bills and Cook (US 2009/0132031 Al, published May 21, 2009).
VI. Claims 17 and 32 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Bills and Furst (US 2010/0168841 Al, published July 1,
2010).
ANALYSIS
Rejection I -Anticipation by Shaked
Claims 1, 2, 4, 20, 34-38, and 4rJ-43
The Examiner finds that Shaked discloses a device 10 that "is capable
of encircling and engaging the elongate tissue (paragraphs 3 8, 41 )" as
required by independent claim 1. Final Act. 4--5 ( also citing Shaked Figs.
3A, 3B, 6A, 6B); see also Ans. 2. The same can be said for independent
claim 38 (i.e., "configured to encircle the elongate tissue" (Claims App. 5)).
The Examiner explains that the coil of Shaked is configured to encircle and
4
Appeal2018-004052
Application 13/796,607
engage elongate tissue because the coil "has a lumen which can receive
elongate tissue." Ans. 2. 4
Appellant contends that "Shaked's device 10 is not configured to
encircle and engage tissue" but is "is configured to surround a catheter ...
and [to] be anchored to a shaft of the catheter." Br. 7 ( emphasis omitted)
(citing Shaked Figs. 2A, 1 lB; quoting Shaked ,r 35). 5
Our reviewing court, has, at least in the context of structural
limitations, found that "configured to" can have a meaning narrower than
"capable of' based on the way the term is used. See Aspex Eyewear, Inc. v.
Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (in construing
"adapted to," adopting the "narrower definition" of "configured to" instead
of the "broader sense" of "capable of'); see also In re Giannelli, 739 F .3d
1375, 1379 (Fed. Cir. 2014) (discussing the distinction identified inAspex).
Figure 11 C of Shaked shows expandable portion 18 encircling the catheter
and "anchored to a shaft of the catheter." Shaked ,r 35. Shaked further
explains, "extension elements 19 of expandable portion 18 of device 10" are
"used as stoppers to prevent catheter 24 from advancing beyond that point."
See Shaked ,r 46; see also Br. 7. Thus, Shaked's device 10 is employed to
surround and anchor a catheter in place; however, it is not configured to
encircle tissue as asserted by the Examiner because when Shaked's device
10 is deployed, tissue does not enter the lumen of expandable portion 18
thereof.
4 Examiner's Answer ("Ans."), dated Dec. 29, 2017.
5 Appeal Brief 1 ("Br."), filed Feb. 8, 2017.
5
Appeal2018-004052
Application 13/796,607
For these reasons, we do not sustain the Examiner's rejection of
claims 1 and 38, and dependent claims 2, 4, 20, 34--37, and 40-43 as
anticipated by Shaked.
Rejection II-Anticipation by Bills
Claim 1
The Examiner finds that Bills discloses a device ( tendon repair device
10) having all limitations of claim 1. Final Act. 7-9 ( citing Bills Fig. 3).
The Examiner explains that because: (1) Bills discloses at paragraph 41 that
its device may be in the form of a "helically wound braid"; (2) the term
"helical" is defined as "having the shape or form of a helix; spiral"; and (3)
the term "wound" is defined as "repeatedly twisted or coiled," Bills' device
can be viewed as a coil. Id. at 7; citing oxforddictionaries.com.
Appellant contends that Bills does not disclose "a coil comprising a
plurality of interconnected turns in series" that is "configured in a spiral
pattern to form the series of interconnected turns of the coil" as claimed. Br.
9. According to Appellant, the Examiner's "interpretation of the term
'helically wound braid' ignores the fact that 'helically wound' is simply
adding description to the main structural component-a braid, and those
having skill in the art would not have understood a 'braid' to be a coil." Br.
9 ( emphasis omitted).
Appellant's Specification does not provide an explicit definition of the
term "coil." However, Appellant's Specification provides guidance as to the
meaning of this term stating, "[t]he tissue repair device 100 comprises a coil
or spiral shape formed by a coil member 103 arranged in a coil or spiral to
form a plurality of interconnected turns 106 that creates a lumen 105 at its
center." Spec. ,r 64. This characterization is consistent with the dictionary
6
Appeal2018-004052
Application 13/796,607
definition of the term "coil," which is defined as a "length of something
wound in a joined sequence of concentric rings. "6 Based on the above, we
agree with the Examiner that Bills discloses a coil as claimed, only braided,
i.e., a "helically wound braid (similar to a 'Chinese finger trap')." Bills
Abstract; see also Ans. 3 ("Bills discloses a helically wound braid (para.
41)"); see also id. at 4; Bills ,r 41 ("The tendon repair device 10 may be
formed of a helically wound braid."; Fig. 3).
Appellant does not provide evidence or persuasive argument to show
that "those having skill in the art would not have understood [Bills'] 'braid'
to be a coil." "Attorney's argument in a brief cannot take the place of
evidence." In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Further, as
the Examiner points out, Bills discloses that its device functions similar to a
"Chinese finger trap." Final Act. 7 ( citing Bills Abstract, ,r 40 ("The tendon
repair device 10 includes a body which approximates or functions in a
manner somewhat similar to a 'Chinese finger trap' in structure and
concept."); Fig. 3); see also Ans. 3--4. In addition, Appellant's own
Specification discloses that the "tissue repair device 100 may approximate or
function in a manner similar to a 'Chinese finger trap."' Spec. ,r 64. Thus,
we are not persuaded by Appellant's contention that Bills' device, being
braided, is different from what would generally be understood as a coil.
Appellant argues that "Bills describes [the] braid as having a 'weaved'
construction" and Bills' "Figure 6 clearly shows the weft threads 34 and
their crossing points." Br. 11. Thus, Appellant contends that "one having
6 See https://en.oxforddictionaries.com/definition/coil (last accessed Jan. 6,
2019).
7
Appeal2018-004052
Application 13/796,607
ordinary skill in the art would not have considered Bills' braid to be the coil
of claim 1, and such a reading by the Examiner is improper." Id. (emphasis
omitted).
Appellant's argument is unpersuasive as the claims do not preclude a
weaved construction or weft threads having cross points. See In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing in the claims
cannot be relied upon for patentability). Moreover, each strand of Bills'
helical wound braid has "a plurality of interconnected turns in series" and "a
spiral pattern to form the series of interconnected turns of the coil" as
claimed. See Bills, Fig. 3; see also Final Act. 7; Ans. 3--4.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 1 as anticipated by Bills.
Accordingly, we sustain the Examiner's rejection of claim 1 as anticipated
by Bills.
Claims 2-5, 20, and 34-37
Appellant contends that the rejection of "dependent claims 2-5, 20
and 34--37 should be withdrawn for at least the same reasons detailed above
with respect to base claim 1." Br. 12. As we are not persuaded that the
Examiner erred in the findings discussed above with respect to claim 1, we
likewise sustain the Examiner's rejection of claims 2-5, 20, and 34--37 as
anticipated by Bills.
Claims 38 and 4rJ-43
Appellant contends that independent "claim 3 8 is patentable over Bills
for at least the reasons discussed above with reference to independent claim
1" and that the rejection of "dependent claims 40-43 should be withdrawn
for at least the same reasons detailed above with respect to base claim 38."
8
Appeal2018-004052
Application 13/796,607
Br. 12-13. As we are not persuaded that the Examiner erred in the findings
discussed above with respect to claim 1, we likewise sustain the Examiner's
rejection of claims 3 8 and 40-43 as anticipated by Bills.
Rejections III- VI Obviousness over Bills and any of Allen, Talja,
Cook, or Furst
Claims 6, 8. 9, 14, 15, 17, 18, 30, 32, and 39
For these rejections, Appellant relies on arguments presented for
Rejection II. Br. 13-14. As we find no deficiencies in the Examiner's
rejection of independent claims 1 and 38 as anticipated by Bills for the
reasons discussed above, we likewise sustain the Examiner's rejections of
claims 6, 17, 18, 30, and 39 as unpatentable over Bills and Allen, of claims
8, 14, and 15 as unpatentable over Bills and Talja, of claim 9 as unpatentable
over Bills and Cook, and of claims 17 and 32 as unpatentable over Bills and
Furst.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 2, 4,
20, 34--3 8, and 40-43 as anticipated by Shaked.
We AFFIRM the decision of the Examiner to reject claims 1-5, 20,
34--38, and 40-43 as anticipated by Bills.
We AFFIRM the decision of the Examiner to reject claims 6, 17, 18,
30, and 39 as unpatentable over Bills and Allen.
We AFFIRM the decision of the Examiner to reject claims 8, 14, and
15 as unpatentable over Bills and Talja.
9
Appeal2018-004052
Application 13/796,607
We AFFIRM the decision of the Examiner to reject claim 9 as
unpatentable over Bills and Cook.
We AFFIRM the decision of the Examiner to reject claims 17 and 32
as unpatentable over Bills and Furst.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
10