Dolly Holt

Patent Trials and Appeals Board

Jul 2, 2021

2020005145 (P.T.A.B. Jul. 2, 2021)

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.
13/796,607 03/12/2013 Dolly Jeanne Holt 47974/2.2 2354
32642 7590 07/02/2021
STOEL RIVES LLP - SLC
201 SOUTH MAIN STREET, SUITE 1100
ONE UTAH CENTER
SALT LAKE CITY, UT 84111
EXAMINER
ROSEN, ERIC J
ART UNIT PAPER NUMBER
3700
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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
__________

Appeal 2020-005145
Application 13/796,607
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

REIMERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 8, 9, 14, 15, 17, 18, 20, 30, 32, and

1 The subject application was previously before the Patent Trial and Appeal
Board in Appeal No. 2018-004052. See Decision dated Feb. 4, 2019. In that
Decision, the adverse decision of the Examiner was AFFIRMED. Following
that Decision, Appellant reopened prosecution and further amended the
claims.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Dolly Creger
Casper, who was formerly known as Dolly Jeanne Holt. Appeal Brief
(“Appeal Br.”) 4, filed Feb. 6, 2020.
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34–43. Claims 7, 10–13, 16, 19, 21–29, 31, and 33 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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.
¶ 2, Figs. 1A–1C. 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 turn 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 turn of
the plurality of turns has a corresponding
second diameter smaller than the
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corresponding first diameter and is
configured to more tightly engage the
elongate tissue than when the coil is in the
relaxed state,
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,
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 turn 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, and.
the device consists of a single coil that does not
overlap itself.

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REJECTIONS3
I. Claims 1–6, 8, 9, 14, 15, 17, 18, 20, 30, 32, and 34–37 stand rejected
under pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
II. Claims 1–5, 20, 34–38, and 40–43 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Bills (US 2013/0013065 A1, published
Jan. 10, 2013) and Shaked (US 2008/0228146 A1, published Sept. 18, 2008)
or Lorenzo (US 2007/0203519 A1, published Aug. 30, 2007).
III. Claims 6, 17, 18, 30, and 39 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Bills, (Shaked or Lorenzo), and Allen (US
2004/0260384 A1, published Dec. 23, 2004).
IV. Claims 8, 14, and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as unpatentable over Bills, (Shaked or Lorenzo), and Talja (US 6,171,338
B1, issued Jan. 9, 2001).
V. Claim 9 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Bills, (Shaked or Lorenzo), and Cook (US 2009/0132031
A1, published May 21, 2009).
VI. Claims 17 and 32 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Bills, (Shaked or Lorenzo), and Furst (US
2010/0168841 A1, published July 1, 2010).

3 The rejection of claims 1, 2, 4, 20, 34–38, and 40–43 under pre-AIA 35
U.S.C. § 102(b), as anticipated by Boyd (US 5,984,896, issued Nov. 16,
1999), has been withdrawn by the Examiner. Examiner’s Answer (“Ans.”)
3, dated Apr. 30, 2020; see also Non-Final Office Action (“Non-Final Act.”)
5, dated Aug. 7, 2019.
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ANALYSIS
Rejection I – Written Description
The Examiner determines that the Specification fails to disclose claim
1’s limitation “a single coil that does not overlap itself.” Non-Final Act. 4.
The Examiner annotates Appellant’s Figures 1B and 1C and identifies
portions of the coil that the Examiner believes are overlapping. Id.
Appellant contends that “the claim phrase ‘does not overlap itself’ is
implicit in the originally filed application.” Appeal Br. 12. Appellant points
out that “[t]he term ‘overlap’ is defined by the Merriam-Webster Dictionary
as ‘to occupy the same area in part’” and “[t]he Cambridge Dictionary
defines [‘]overlap[’] as ‘to cover part of the same space.’” Id.4 Appellant
further points out that with respect to Figure 1A, the Specification describes
“that there is a spacing of Y between adjacent turns 106 of the coil 105 of
the device 100.” Id.; see also Spec. ¶ 64. Appellant argues that the
Examiner incorrectly
refers to isometric views of the coil (FIGS. 1B and 1C) as
demonstrating “overlapping,” and appears to rely on reasoning
that portions of the coil that appear to “cross” in a two
dimensional view are overlapping. However, this reasoning is
flawed because it ignores the spatial separation at those points
that exists in an actual three-dimensional embodiment of a coil.
Id. at 13.
The Examiner responds that the Specification does not require those
definitions of the term “overlap” as proffered by Appellant and that there are
other definitions such as “to extend over or past and cover a part of; extend

4 Citing https://www.merriamwebster.com/dictionary/overlap (last visited
Feb. 3, 2020); https://dictionary.carnbridge.org/us/dictionary/english/overlap
(last visited Feb. 3, 2020).
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over so as to cover partly; [and] to lie or extend over and cover part of.”
Ans. 3.5 The Examiner states that “[t]he Examiner agrees that Appellant has
support for separation between the turns of the coil, however, Appellant did
not claim that.” Id. at 4. The Examiner provides a version of Appellant’s
Figure 1A, in which the Examiner rotates the figure 90 degrees and
identifies portions of the coil that extend over other portions of the coil, thus
meeting the “overlap” definitions proffered by the Examiner. Id. at 4–5.
Appellant responds that the Examiner’s agreement that the
Specification provides support for separation between turns of the coil
would mean that there is also support for “the turns of the coil [] not
overlap[ping] because they do not ‘occupy the same area in part’ or ‘cover
part of the same space,’” which is consistent with Appellant’s proffered
definitions for the term “overlap.” Reply Br. 2.6,7
In rejecting a claim under 35 U.S.C. § 112, first paragraph, for lack of
adequate descriptive support, it is incumbent upon the Examiner to establish
that the originally-filed disclosure would not have reasonably conveyed to
one having ordinary skill in the art that Appellant had possession of the now
claimed subject matter. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). Adequate description under 35
U.S.C. § 112, first paragraph, does not require literal support for the claimed

5 Citing https://www.merriam-webster.com/dictionary/overlap;
https://www.lexico.com/en/definition/overlap;
https://www.ahdictionary.com,word/search.html?q=overlap.
6 Reply Brief (“Reply Br.”), filed June 29, 2020.
7 Regarding Appellant’s definition of “occupy the same area in part,” it is
not explained how a structure can “occupy the same area” as another
structure, even if only partially.
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invention. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323
(Fed. Cir. 2000) (“In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec verba support
for the claimed subject matter at issue.”); In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that Appellant had possession of the concept of what is claimed. In
re Anderson, 471 F.2d 1237, 1242 (CCPA 1973). Thus, “written description
is about whether the skilled reader of the patent disclosure can recognize that
what was claimed corresponds to what was described.” Alcon Research Ltd.
v. Barr Labs., Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014). We further note
that “things patent drawings show clearly are [not] to be disregarded.” In re
Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis in original). Also,
during prosecution before the Office, claims are to be given their broadest
reasonable interpretation consistent with the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Here, we construe the term “overlap” to mean “to cover part of the
same space,” according to the definition proffered by Appellant (which is
also consistent with the definitions proffered by the Examiner). This feature
is clearly absent from Appellant’s Figures 1A–1C. Our construction is
consistent with the Specification’s description of Figure 1 as showing “[a]
tissue repair device 100 [having] a length of X and spacing of Y between the
turns 106 of the coil 105 of the device 100,” i.e., Appellant’s repair device
has turns that do not cover the same space and thus do not overlap as this
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term is understood. Spec. ¶ 64 (emphasis added). Consequently, an
ordinarily skilled artisan would have turned to the definitions proffered by
either Appellant (sans “occupy the same area”) or the Examiner for the term
“overlap,” and an ordinarily skilled artisan would have recognized that
Appellant’s Figures 1A–1C show coils with turns that do not cover the same
space, i.e., the coil does not overlap itself. With regard to the Examiner’s
position that there are other definitions of the term overlap, “where there are
several common meanings for a claim term, the patent disclosure serves to
point away from the improper meanings and toward the proper meanings.”
Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed.
Cir. 2003). Drawing disclosures are not demonstrated inadequate for
purposes of complying with the Written Description requirement based on
an examiner’s “speculation that one skilled in the art might interpret the
teaching of the inventor in a remote and equivocal manner.” In re
Wolfensperger, 302 F. 2d 950 (CCPA 1962). As such, we determine that the
claimed subject matter “a single coil that does not overlap itself” is
supported by the originally-filed disclosure.
For these reasons, we do not sustain the Examiner’s rejection of
claims 1–6, 8, 9, 14, 15, 17, 18, 20, 30, 32, and 34–37 as failing to comply
with the written description requirement.

Rejection II – Obviousness over Bills and Shaked or Lorenzo
Appellant does not offer arguments in favor of independent claim 38
and dependent claims 2–5, 20, 34–37, and 40–43 separate from those
presented for independent claim 1. Appeal Br. 17–30. We select claim 1 as
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the representative claim, and claims 2–5, 20, 34–38, and 40–43 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019).
As to claim 1, the Examiner finds that Bills discloses a device (tendon
repair device 10) having most of the limitations of claim 1. Non-Final Act.
7–9 (citing Bills ¶¶ 40–42, Fig. 3). The Examiner explains that Bills’ device
can be regarded as a coil 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.” Id. at 7;
citing oxforddictionaries.com. The Examiner points out that Bills discloses
that its device operates like a Chinese finger trap. Id. at 8 (citing Bills ¶ 40).
The Examiner further finds that Bills discloses for its device,
a first subset of the turns at the first end is capable of engaging a
first portion of the tissue and a second subset of the turns at the
second end of the coil is capable of engaging a second portion of
the tissue such that an axial tensile stress along the tissue pulls
the first and second subsets in an axial direction away from one
another and extend the coil and thereby change each turn from
the relaxed state to the extended state to more tightly engage the
tissue and counteract the axial tensile stress.
Id. at 8–9 (citing Bills ¶ 42). The Examiner concedes that “Bills does not
expressly disclose the device consisting of a single coil that does not overlap
itself.” Id. at 9. The Examiner, however, finds that each of Shaked and
Lorenzo discloses this missing limitation. Id. at 10. More particularly, the
Examiner finds that both Shaked and Lorenzo disclose a single coil that is
free of intersection (i.e., “does not overlap itself”) as an equivalent of braids
“since both are used for gripping objects within lumens of the device.” Id.
(citing Shaked, Figs. 5A, 5B, 6A, 6B; Lorenzo, Figs. 1–6). The Examiner
concludes that “because single coils and helical braids were art recognized
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equivalents,” it would have been obvious to an ordinarily skilled artisan “to
substitute the helical braid of Bills for the single coil [of Shaked or Lorenzo]
that is free of intersections since both are capable of anchoring to objects
within the lumen.” Id.
Appellant contends that the combination of cited art does not disclose
the penultimate limitation of claim 1, i.e.,
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 turn 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.
Appeal Br. 18–22. In support for this contention, Appellant argues that:
(1) “Bills fails to teach or suggest frictional engagement of end
portions of the tendon repair device 10 of Bills (e.g., the braid) in the relaxed
state sufficient to cause lengthening of the braid as a result of tensile stress
of the elongate tissue” (id. at 19);8
(2) “FIG. 8A of Bills illustrates a clearance between the tendon and
the tendon repair device 10 at least at the end portions of the braid . . . that

8 We note that throughout the briefs, Appellant makes arguments relating to
frictional engagement between the coil and tissue and preclusion of using
sutures for such, apparently in response to the Examiner’s findings as
discussed in the Non-Final Office Action (see Non-Final Act. 9). This
subject matter is not required in claim 1, but is required in claim 20. See
Appeal Br. 32–33, 34 (Claims App.).
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would preclude the tendon repair device 10 from engaging tissue at the first
and second end of the device” (id.);
(3) “Bills also clearly explains that the conditions of use of the tendon
repair device 10 include sliding the braid into the desired longitudinal
position on a tendon and then suturing the braid to each side of the severed
tendon” (id. at 19–20 (citing Bills ¶ 48));
(4) Bills is not capable of being used without suture for lengthening its
device because “[t]he tendon repair device 10 of Bills has no catch points
(akin to the knuckle of the finger to engage a Chinese finger trap)” and
“Bills teaches that the braid is sutured to each side of the severed ends in the
relaxed state” (id. at 20 (citing Bills ¶ 48)); and
(5) Bills does not disclose claim 1’s limitation “the coil is configured
to engage the elongate tissue continuously as it transforms from the relaxed
state to the extended state” because if “the surgeon may slide the tendon
repair device along the tendon,” then “the tendon repair device does not
engage the tendon in the relaxed state” (id. at 22). See also id. at 25–26;
Reply Br. 3–6.
Appellant’s above contentions are unpersuasive and we address each
argument as follows. The Specification discloses “[t]he tissue repair device
100 may approximate or function in a manner similar to a ‘Chinese finger
trap’ in concept by reducing in diameter upon extension, allowing the device
to accommodate any decrease in diameter seen in the elongate tissue such as
a ligament or tendon during extension.” Spec. ¶ 10. Bills discloses “[t]he
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 and may provide additional support to the tendon when placed under
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mechanical strain.” Bills ¶ 40. As both Appellant’s device and Bills’ device
have similar structure and function of a Chinese finger trap, both would
operate in a similar manner when applied to tissue. To be sure, Bills
discloses “the device may be deployed during surgery by inserting each end
of a severed tendon into the device such that the two ends meet within the
device. When tension is applied to the tendon, the device tightens, thus
holding the severed ends of the tendon even more securely.” Bills ¶ 17
(emphasis added); see also id. ¶ 42; Ans. 6. Even if Bills’ Figure 8A shows
clearance between the tendon and its repair device, an ordinarily skilled
artisan would understand how a Chinese finger trap works, i.e., when the
coils are tensioned, they become smaller, and likewise, when the coils are
compressed, they become larger (thereby allowing the coil to slide over the
tendon before returning to its relaxed state). Moreover, any clearance that
may exist does not mean that Bills’ device is not capable of frictional
engagement with tissue. See also Ans. 6–7. The degree of frictional
engagement (or lack thereof) is dependent on the intended use of the device,
i.e., which tendon––depending on its size or diameter––that the device is
being used for. We also agree with the Examiner that even if Bills discloses
that its device “slides” over a tendon, there is some degree of “frictional
engagement.” See Ans. 7. Claim 1, as well as claim 20, does not require or
preclude a particular amount of frictional engagement. We further agree
with the Examiner that Bills does not require sutures for its device to operate
like a Chinese finger trap, as Bills discloses sutures “help hold the tendon
repair device repair in place” and “the surgeon may add one or more
sutures.” Bills ¶ 48 (emphases added); see also Ans. 7.
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Appellant next contends that “the anchoring portion 16 of Shaked
provides no frictional engagement with the catheter shaft when in the non-
anchoring state.” Appeal Br. 21; see also id. at 23.
This argument is also unpersuasive. The Examiner correctly responds
that Shaked’s “[p]aragraphs 39 and 40 teach a sticky coating applied to an
internal portion of the device.” Ans. 8. We also note that Shaked discloses
“[t]his configuration may work similar to a Chinese finger trap, wherein
upon pulling the ends outwardly, the diameter is reduced and anything
caught in between is locked in” with respect to the embodiment shown in
Figures 5A and 5B (see Shaked ¶ 40) and “[a]nchoring portion 16 may be
anchored onto shaft 30 of catheter 24, by pulling a proximal end of wire 27
proximally, thus reducing the diameter of anchoring portion 16 and causing
the coil to contact shaft 30” with respect to the embodiment shown in
Figures 6A and 6B (see Shaked ¶ 41). Thus, Shaked discloses braids and
single coils that operate in a similar manner as the device of Bills.9 Here, we
note that the Examiner relies on Shaked only for substituting a braid with a
single coil and Bills already discloses frictional engagement with tissue via a
device that has structure and function of a Chinese finger trap, as discussed
above. Our comments above with respect to frictional engagement of a
device––even in a relaxed state––apply equally here in response to
Appellant’s contention. We also note that Shaked’s use of the term

9 Although the Examiner relies on Shaked or Lorenzo for disclosing a single
coil, it appears that Bills also discloses a single coil by stating that “[t]he
braid may be formed from a number of pieces of material which are wound
together, or from a single wound piece of material.” Bills ¶ 41 (emphasis
added).
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“anchored” does not mean that its device, in a relaxed state, is not capable of
frictional engagement with tissue.
Appellant contends that “Shaked is not configured to encircle tissue.”
Appeal Br. 21. However, as discussed above, the Examiner relies on Bills
for disclosing a device that engages tissue and Shaked only for teaching a
braid and coil are equivalents with respect to a device that grips objects
within its lumen. See Non-Final Act. 10; Ans. 8.
Appellant contends that “there is no suggestion or motivation to
substitute the single coil of Shaked for the braid of Bills.” Appeal Br. 23.
Appellant argues that “Shaked provides that the anchoring portion (single
coil portion) is configured to be transitioned from an enlarged/non-anchored
state as shown in FIG. 6A to a minimized/anchored state as shown in FIG.
6B by pulling on the proximal end proximally causing the anchoring
portion to contract” and “[a]s such, Shaked appears to require pulling
directly on the proximal end of the coil when the coil is in a non-anchored
state.” Id. (citing Shaked ¶ 41). According to Appellant, “[a]s is clear from
FIGS. 6A and 6B, the constriction of the single coil takes place along the
length of the anchoring portion 16 including opposite end portions of the
single coil, which, as one of ordinary skill would recognize, would create a
tension stress in the catheter shaft as the ends of the anchoring portion 16 are
pulled in opposite directions” and “one of ordinary skill would recognize
that this tension stress would urge separation of severed ends of the tendon,
in opposition to the intended purpose of the instant claimed device, if the
single coil of Shaked were substituted for the braid of Bills.” Id. at 23–24.
Consequently and according to Appellant, “substituting the single coil of
Shaked for the braid of Bills to arrive at the claimed invention would result
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in a device that necessarily would cause separation of the severed ends of the
tendon, thus changing the principle of operation of Bills.” Id. at 24.
Lawyer arguments and conclusory statements which are unsupported
by factual evidence are entitled to little probative value. In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984). Here, Appellant does not provide
supporting evidence to show that reducing the diameter of Shaked’s
anchoring portions and the resulting tension stress would urge separation of
severed ends of the tendon that are placed within Shaked’s device.
Additionally, we note that Appellant’s Figure 1C also shows a reduction of
the diameter of the coil similar to that of Shaked’s device as shown in its
Figure 6B. If Shaked’s device would urge separation of severed ends of the
tendon, then it seems the same thing would happen for Appellant’s coil. See
also Ans. 9–11; id. at 10 (explaining that “[p]aragraphs 39 and 40 [of
Shaked] teach a sticky coating on the inside of the coil” and “[t]hus, the
combination would not cause separation”). As such, Appellant’s contention
does not apprise us of Examiner error.
In the Reply Brief, Appellant contends that “the needed sticky coating
already demonstrates the coil is not equivalent to the weave.” Reply Br. 6.
Appellant also contends that
[o]ne with ordinary skill in the art would recognize that the sticky
coating of Shaked would not engage with the wet tissue like it
would to a catheter. A living tendon is wet and the sticky coating
described by Shaked wouldn’t provide sufficient frictional
engagement to prevent sliding. Further, the coil shape of Shaked
could not be sutured as the device in Bills because the coil could
unwind like a key off a key ring.
Reply Br. 6.
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We note that Shaked discloses for both its braid and single coil that
“[i]n some embodiments, a sticky coating is applied.” Shaked ¶¶ 40, 41
(emphasis added). Thus, the sticky coating is not required for either
Shaked’s braid or coil. Nonetheless, as discussed above, Bills already
discloses fictional engagement to tendon and, as discussed above, such
engagement is a function of how thick the tendon is, i.e., an intended use of
the device. Moreover, to the extent that Appellant is arguing the single coil
of Shaked cannot be substituted for the braid of Bills because of the different
materials that are placed within the coil and that further modifications are
necessary, the test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; rather, the test is whether it would have been obvious to those of
ordinary skill in the art to have combined the teachings of the references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). We also note that the
claims do not require any degree of stickiness of the coil to living tendon
and that the Examiner proposes modifying the device of Bills in view of the
teachings of Shaked, instead of vice versa, as Appellant appears to suggest.
Thus, we are unpersuaded by Appellant’s contention that “the coil is not
equivalent to the weave.”
In regard to Lorenzo, Appellant contends that its “device is designed
such that the cylindrical member 38 may be longitudinally displaced relative
to (away from) the tubular member 34” and “[a]s such, Lorenzo teaches that
the constricting component 26 does not provide any constrictive frictional
engagement in the open configuration” and “Lorenzo also fails to teach or
suggest a coil to engage elongate tissue in the manner recited in claim[] 1.”
Appeal Br. 27.
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We are unpersuaded by these arguments. “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. [The reference]
must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (citation omitted). As discussed above, Bills is relied upon
for disclosing frictional engagement in the relaxed state with elongate tissue.
See also Ans. 12. Moreover, we do not agree that Lorenzo’s constricting
component 26 is not capable of frictional engagement with tissue for the
same reasons discussed above with respect to Shaked.
Appellant contends that “[s]imilar to Shaked, Lorenzo operates by
extending a constriction component 26 to directly displace the end portions
30, 28 relative to each other” and “[h]ence, similar to Shaked, the
constriction component 26 is configured so that extending the constriction
component 26 would cause a tensile stress in the shaft 42 during separation
of the end portions 30, 28” and “[t]his tensile stress would urge the severed
ends of the tendon to separate if the coil of Lorenzo were substituted for the
braid of Bills.” Appeal Br. 29. Similar to Shaked, Appellant argues that
consequently, “substituting the single coil of Lorenzo for the braid of Bills to
arrive at the claimed invention would result in a device that necessarily
would cause separation of the severed ends of the tendon thus changing the
principle of operation of Bills.” Id.
Lorenzo discloses that its “coil constriction component 26 constricts
to reduce the internal cross-section.” Lorenzo ¶ 31. Thus, the structure and
function of Lorenzo’s coil constriction component 26 appears to be similar
to those of Shaked’s device. As such, Appellant’s arguments are
Appeal 2020-005145
Application 13/796,607

18
unpersuasive for the reasons discussed above with respect to Shaked. More
particularly, our comments above apply equally here––that Appellant does
not provide supporting evidence to show reducing the diameter of Lorenzo’s
coil constriction component 26 and the resulting tension stress would urge
separation of severed ends of the tendon that are placed within Lorenzo’s
coil constriction component. See also Ans. 14.
For these reasons, we sustain the Examiner’s rejection of claims 1–5,
20, 34–38, and 40–43 as unpatentable over Bills and Shaked or Lorenzo.

Rejections III–VI – Obviousness over Bills, (Shaked or Lorenzo), and any of
Allen, Talja, Cook, or Furst
Appellant does not present arguments for these rejections. Appeal Br.
30. As we find no deficiencies in the Examiner’s rejection of independent
claims 1 and 38 as unpatentable over Bills and Shaked or Lorenzo for the
reasons discussed above, we likewise sustain the Examiner’s obviousness
rejections of claims 6, 8, 9, 14, 15, 17, 18, 30, 32, and 39 over the variously
indicated combinations of cited prior art.

Appeal 2020-005145
Application 13/796,607

19
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  References/Basis Affirmed Reversed
1–6, 8, 9,
14, 15,
17, 18,
20, 30,
32, 34–37
112, First
Paragraph 
Written Description 1–6, 8, 9,
14, 15, 17,
18, 20, 30,
32, 34–37
1–5, 20,
34–38,
40–43
103(a) Bills, Shaked or
Lorenzo
1–5, 20,
34–38,
40–43

6, 17, 18,
30, 39
103(a) Bills, (Shaked or
Lorenzo), Allen
6, 17, 18,
30, 39

8, 14, 15 103(a) Bills, (Shaked or
Lorenzo),Talja
8, 14, 15
9 103(a) Bills, (Shaked or
Lorenzo), Cook
9
17, 32 103(a) Bills, (Shaked or
Lorenzo), Furst
17, 32
Overall
Outcome
1–6, 8, 9,
14, 15,
17, 18,
20, 30,
32, 34–43

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED