Lüder MOSLER et al.Download PDFPatent Trials and Appeals BoardJan 8, 20212020003404 (P.T.A.B. Jan. 8, 2021) Copy Citation 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. 13/296,816 11/15/2011 Lüder MOSLER 76156.0217 7586 57600 7590 01/08/2021 HOLLAND & HART 222 South Main Street, Suite 2200 P.O. Box 11583 Salt Lake City, UT 84110 EXAMINER WATKINS, MARCIA LYNN ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 01/08/2021 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): PATENTDOCKET@HOLLANDHART.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LÜDER MOSLER, MARTIN HILLMANN, and RALF CARSTENS Appeal 2020-003404 Application 13/296,816 Technology Center 3700 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 13, 26, 27, 29, 30, 32, 34, 35, 37, 38, and 40. Appeal Br. 3. An oral hearing was held on December 15, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies itself Otto Bock Healthcare LP as the real party in interest. Appeal Br. 1. Appeal 2020-003404 Application 13/296,816 2 CLAIMED SUBJECT MATTER The application is titled “Pump Comprising a Moving Wall and Use of a Pump of this Type.” Spec. 1. Claim 13, reproduced below with emphasis added to a limitation central to our analysis, is illustrative of the claimed subject matter: 13. A lower limb prosthetic device, comprising: a lower-leg tube; a prosthetic socket configured to receive a residual limb, the prosthetic socket comprising a suction well; a functional part of a prosthetic foot, the functional part of the prosthetic foot being spaced distal of the socket by the lower- leg tube and configured to be inserted into an internal cavity of a shoe or cosmesis, the functional part of the prosthetic foot comprising: first and second rigid members which are movable relative to each other; and a pistonless vacuum pump positioned between the first and second rigid members, the pistonless vacuum pump comprising: a wall configured to form a closed-off fluid volume, the wall including flexible portions deformable by application of a first force through the first and second rigid members to the wall, the first force produces a volume reduction of the closed-off fluid volume and, after the volume reduction, the wall being movable by application of a second force, which results from a return force of the flexible portions deformed by the first force, and which produces a volume increase in the closed-off fluid volume; an inlet port extending through the wall and in fluid communication with the closed-off fluid volume and the suction well of the prosthetic socket; and an outlet port extending through the wall, the outlet port being arranged in fluid communication Appeal 2020-003404 Application 13/296,816 3 with the closed-off fluid volume, the outlet port including a non-return valve configured to exhaust external to the closed-off fluid volume; wherein the first force expels fluid from the closed-off fluid volume through the outlet port and the second force draws fluid from the suction well through the inlet port and into the closed-off fluid volume to create a vacuum condition in the suction well. Appeal Br. 24–25 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fikes US 4,911,724 Mar. 27, 1990 Phillips US 5,899,944 May 4, 1999 Shin US 5,975,861 Nov. 2, 1999 Wang US 6,004,116 Dec. 21, 1999 Caspers2 US 2001/0016781 A1 Aug. 23, 2001 Caspers ’278 US 2004/0163278 A1 Aug. 26, 2004 REJECTIONS The following rejections are before us on appeal: Claims Rejected 35 U.S.C. § Reference(s)/Basis 13, 26, 27, 29, 30, 32, 34, 35, 37, 38 103 Caspers, Fikes, Phillips, Caspers ’278 40 103 Caspers, Fikes, Phillips, Caspers ’278, and Shin or Wang Final Act. 3–9. 2 The Examiner refers to Caspers as “Caspers ’781.” See, e.g., Final Act. 3. Appeal 2020-003404 Application 13/296,816 4 OPINION 1. Rejection – Caspers, Fikes, Phillips, and Caspers ’278 The Examiner rejects claims 13, 26, 27, 29, 30, 32, 34, 35, 37, and 38 as unpatentable over Caspers, Fikes, Phillips, and Caspers ’278. Final Act. 3. Appellant argues these claims as a group. See Appeal Br. 20. We select claim 13 as the representative claim, with claims 26, 27, 29, 30, 32, 34, 35, 37, and 38 standing or falling with claim 13. 37 C.F.R. § 41.37(c)(1)(iv). a. Examiner’s Rejection In rejecting claim 13, the Examiner relies primarily on Caspers’s prosthetic device for satisfying the majority of the limitations. See Final Act. 3–7. In particular, the Examiner cites to Caspers’s Figure 4, which we reproduce, below: Appeal 2020-003404 Application 13/296,816 5 Figure 4 is a cross-sectional view of a “residual limb donning the polyurethane sleeve, stretchable nylon sleeve, liner, osmotic membrane, nylon sheath and socket of an artificial limb.” Caspers ¶¶ 24, 25. The Examiner finds that Caspers discloses a lower limb prosthetic device configured to receive a residual limb having prosthetic socket 60, with suction well 62, in which the prosthetic member is spaced distal of socket 60 by at least a portion of lower-leg tube 54. Final Act. 3–4 (citations omitted). The Examiner further finds that the prosthetic member includes a weight- driven mechanical pump 70, 72 positioned between first and second moveable members and that the pump includes an inlet port, which connects tube 76 to pump 72, in connection with the inner fluid volume of the pump. Id. at 4 (citations omitted). The Examiner acknowledges that Caspers does not disclose “the prosthetic member is a prosthetic foot including first and second rigid members and the structure of the disclosed mechanical pump substantially as claimed.” Id. To address the missing limitations, the Examiner relies on the teachings of Fikes, Phillips, and Caspers ’278. See id. at 4–7. As to Fikes, the Examiner finds that Fikes teaches a “Soft Ankle Cushioned Heel” for prosthetic foot devices, and submits an annotated version of Fikes’s Figure 6 (id. at 4–5), which we reproduce, below: Appeal 2020-003404 Application 13/296,816 6 Figure 6 depicts a bellows mounted inside the heel of an artificial foot. Fikes, 2:67–68. As indicated in annotated Figure 6, the Examiner finds that Fikes teaches the functional part of prosthetic foot 30 as being spaced distally of a socket (not shown) by lower leg tube 11 and comprising first and second members that move relative to each other for compression of piston-less pump 64. Final Act. 4–5 (citations omitted). The Examiner relies on Phillips for teaching a compressible cushion that may be provided between two rigid members, citing Phillips’s Figures 1, 2, and 8. Id. at 5–6. We reproduce Figure 1 of Phillips, below: Appeal 2020-003404 Application 13/296,816 7 Figure 1 depicts a prosthesis incorporating a single bladder member. Phillips, 3:27–29. The Examiner finds that Phillips teaches compressible cushion 16 between two rigid members 12. Final Act. 5–6. The Examiner further finds that Phillips teaches that cushion 16 “may be positioned at any location within any known prosthetic . . . and inflated/deflated, etc. to meet the needs of a particular amputee.” Id. at 6 (citing Phillips, 6:35–39). In relying on Caspers ’278, the Examiner finds that it “expressly discloses that when applying a pump to a form-fitting closed socket device for a user’s limb, it is within the skill of a worker in the art to understand how to use a piston-less pumping device in either achieving suction or positive air flow as a matter of choice.” Id. at 6 (citing Caspers ’278 ¶ 14). In combining Caspers, Fikes, Phillips, and Caspers ’278, the Examiner reasons: Appeal 2020-003404 Application 13/296,816 8 Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to try modifying the device of Caspers ’781 by incorporating the mechanical pump into and as a functional part of the prosthetic foot and position- able into a shoe, which is a concept expressly shown to be an obvious matter of design choice by Fikes, and in accordance with the teachings and knowledge at the time of the invention as established by Caspers ’278 as it regards at least to use and configuration of known pumps, in order to provide a mechanical weight activated prosthetic pump that also provides for heel cushion and resilience in a prosthetic foot, as taught and/or suggested by Fikes, with predictable results and a reasonable expectation of success. Indeed, given the evidence of the prior art of record, it would have been obvious to one of ordinary skill in the art at the time of the invention to try incorporating the piston-less vacuum pump of the invention of Fikes in accordance with the teachings and knowledge established by Caspers ’278 between two rigid members of a prosthetic foot, as taught by Phillips, in order to use the beneficial, known socket vacuum pump in a known prosthetic foot for the identified benefit of providing a desired resiliency and effect for a particular user and/or application with predictable results and a reasonable expectation of success. Id. at 7. b. Analysis In contesting the rejection, Appellant presents numerous interrelated arguments, which we address separately, below. First, Appellant argues, “There is no disclosure or suggestion by Caspers ’781 of the pump 70 being a part of the foot 56 or even being positioned at any location distal of the shin-mounted location.” Appeal Br. 14. Appeal 2020-003404 Application 13/296,816 9 Appellant’s first argument is not persuasive. The Examiner does not rely on Caspers for disclosing or suggesting pump 70 as part of a foot. See Final Act. 4. Rather, the Examiner relies on Fikes for teaching a bellows incorporated in a prosthetic foot device (id.) and reasons that a skilled artisan would have modified Caspers to relocate Caspers’s pump into the heel of a prosthetic device so that it “provide[s] for heel cushion and resilience in a prosthetic foot” (id. at 7). Appellant’s argument attacks Caspers individually, ignoring the proposed combination of Caspers in view of Fikes’s teachings. Appellant cannot show non-obviousness by attacking references individually when the rejection is based on combinations of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Appellant’s argument does not identify error in the Examiner’s rejection. Second, Appellant argues that “a person of ordinary skill in the art reviewing Caspers ’781 would have no motivation or even a suggestion to modify the foot 56 disclosed by Caspers ’781” to include the claimed “pistonless vacuum pump comprising” “an inlet port” and “an outlet port.” See Appeal Br. 14; see also id. at 24 (Claims App.). Appellant’s second argument is also unpersuasive. As explained by the Examiner, Appellant’s argument is not commensurate in scope with claim 13. See Ans. 6. We agree with the Examiner’s determination that “the claim scope merely requires inlet and outlet ports, which are provided at least by functional tubing of the Caspers device.” Id. As such, Appellant’s argument does not identify error. Third, Appellant argues, “Fikes fails to disclose or suggest a functional part of a prosthetic foot that includes ‘first and second rigid Appeal 2020-003404 Application 13/296,816 10 members which are movable relative to each other’ and ‘a pistonless vacuum pump positioned between the first and second rigid members.’” Appeal Br. 14. Appellant explains that “there is no disclosure or suggestion by Fikes that any portion of the foot is rigid” and that “Fikes does not remedy the deficiencies of Caspers ’781 as it relates to a functional part of a prosthetic foot having first and second rigid members which are movable relative to each other and a pistonless vacuum pump positioned between the first and second rigid members.” Appeal Br. 15. Appellant’s third argument is also unpersuasive. The Examiner does not rely on Fikes for teaching first and second rigid members. See Final Act. 5–6. Rather, the Examiner finds that “Phillips expressly teaches a compressible cushion . . . may be provided between two rigid members.” Id. (citing Phillips, Figs 1, 2, 8). The Examiner proposes to further modify Caspers (as first modified by Fikes’s teachings) by placing the cushion “between two rigid members of a prosthetic foot, as taught by Phillips.” Id. at 7. Appellant’s argument attacks the references individually and does not identify error in the Examiner’s rejection. See Merck, 800 F.2d at 1097. Fourth, Appellant argues that “there is no disclosure or suggestion by Fikes of using the bellows 64 as a vacuum pump” and that “Fikes is completely silent regarding operation of the bellows 64 to create a vacuum pressure condition that is used to draw air out of the bladder 60.” Appeal Br. 15–16. Appellant explains, “the pump according to Fikes is not a vacuum pump but a pressure pump . . . [and a skilled artisan] would be directed away from attempting to combine Fikes with Caspers . . . or Phillips.” Reply Br. 3. Appeal 2020-003404 Application 13/296,816 11 Appellant’s fourth argument is not persuasive. The Examiner finds that because Caspers ’278 expressly discloses that when applying a pump to a form-fitting loosed socket device for a user’s limb, it is within the skill for a worker in the art to understand how to use a piston-less pumping device in either achieving suction or positive air flow as a matter of design choice. Ans. 5 (citing Caspers ’278 ¶ 14). Appellant’s argument attacks Fikes individually and does not identify error in the Examiner’s rejection. See Merck, 800 F.2d at 1097. Fifth, Appellant argues that “Caspers ’278 is directed to a shoe, and particularly a shoe for use with an actual foot of a user.” Appeal Br. 16. Appellant explains, “Caspers ’278 does not disclose or suggest a lower limb prosthetic device where a prosthetic socket is connected through a lower-leg tube to the prosthetic foot.” Id. Appellant explains that a skilled artisan “would have no motivation to combine the shoe disclosed by Caspers ’278 with the foot 56 disclosed by Caspers.” Id. at 18. Appellant’s fifth argument is not persuasive, as the Examiner does not rely on Caspers ’278 for teaching a prosthetic device. As explained by the Examiner in the Answer, “Caspers ’278 is relevant for its teachings regarding use of a pump device with a limb of a user,” specifically, a shoe. See Ans. 7. Appellant’s argument does not identify error in the Examiner’s rejection. See Merck, 800 F.2d at 1097. Sixth, Appellant argues, “Phillips shows neither a liner nor a socket, so there clearly is no motivation or purpose in implementing the pump of Caspers . . . into the foot of Phillips.” Reply Br. 2. Appeal 2020-003404 Application 13/296,816 12 Appellant’s sixth argument is not persuasive. The Examiner does not rely on Phillips for teaching a liner or a socket. See Final Act. 5–6. Rather, the Examiner relies on Phillips for teaching “a compressible cushion . . . may be provided between two rigid members . . . of a prosthetic foot.” Id. Appellant’s argument does not identify error in the Examiner’s rejection. See Merck, 800 F.2d at 1097. Finally, Appellant argues that the Examiner relies on impermissible hindsight, and that “there is no motivation for a person of ordinary skill in the art to combine Caspers . . . , Fikes, Phillips, and Caspers ’278.” Appeal Br. 17; see also Reply Br. 1–2. Appellant explains that “the disclosure of each reference must be taken as a whole, and the teachings of a given reference cannot be taken out of context.” Reply Br. 4. Appellant’s argument is not persuasive. In combining Caspers with Fikes, the Examiner proposes to modify Caspers by relocating its pump to the heel of a prosthetic for the purpose of providing cushioning. See Final Act. 7. Fikes teaches that an object of its invention is to “decrease the amount of stress on the traumatized area” (Fikes 2:25–27), and the Examiner’s modification is supported by the Fikes’s explicit teaching of reducing stress. In other words, Fikes’s teaching of using a cushion in the heel of a prosthetic device would reduce such stress. In further combining Caspers and Fikes with Phillips, the Examiner proposes to place the heel cushion between two rigid members, as taught by Phillips, for the “benefit of providing a desired resiliency and effect for a particular user.” See Final Act. 7. Phillips teaches that its “associated structural members” exhibit “spring-stress response characteristics” for Appeal 2020-003404 Application 13/296,816 13 assisting a wearer by storing and releasing spring energy generated from walking. See Phillips 6:2–10. The Examiner’s additional modification of placing the heel cushion/pump between two rigid members, as taught by Phillips, is also supported by the record. Namely, placing a cushion between two spring-like rigid members would provide resiliency for a particular user. For example, a heavier-set user may benefit from a cushion interposed between rigid members with larger spring forces, whereas a lighter-weight user may benefit from a cushion interposed between rigid members with lesser spring forces. As to Caspers ’278, the Examiner simply cites to this reference as evidence that a skilled artisan would “understand how to use a piston-less pumping device in either achieving suction or positive air flow as a matter of design choice.” Ans. 5 (citing Caspers ’278 ¶ 14). Accordingly, Appellant’s arguments do not persuade us of Examiner error in the rejection of claim 13. As such, we affirm the rejection of claim 13, along with claims 26, 27, 29, 30, 32, 34, 35, 37, and 38, which fall therewith (see 37 C.F.R. § 41.37(c)(1)(iv)), as unpatentable over Caspers, Fikes, Phillips, and Caspers ’278. 2. Rejection – Caspers, Fikes, Phillips, Caspers ’278, and Shin or Wang The Examiner rejects claim 40 as unpatentable over Caspers, Fikes, Phillips, Caspers ’278, and Shin or Wang. Final Act. 8. Claim 40 depends from independent claim 13 and further recites, “wherein the inlet and outlet ports are positioned at separate locations along the wall.” Appeal Br. 28 (Claims App.). Appeal 2020-003404 Application 13/296,816 14 In rejecting the claim, the Examiner finds that Caspers in view of Fikes, Phillips, and Caspers ’278 is silent regarding the inlet and outlet ports being positioned along the wall as claimed. Final Act. 9. To address the limitation, the Examiner relies on Shin and Wang in the alternative as “each teach[es] inlet and outlet ports . . . positioned at separate locations along the wall (e.g., figures 2 and 3 of Shin; and Wang Figure 4A).” Based on these additional teachings, the Examiner reasons; It would have been obvious to one of ordinary skill in the art at the time of the invention to try forming the inlet and outlet ports at separate locations along the wall as an obvious matter of design choice and placement of the inlet and outlet ports at any location so long as they are making the necessary functional communications with predictable results and a reasonable expectation of success. Id. As to Shin, Appellant argues that “Shin fails to disclose or suggest a vacuum pump” and that the “pump disclosed by Shin is solely a positive pressure pump use[d] to supply a flow of pressured air to the interior of the shoe.” Appeal Br. 21. As to Wang, Appellant argues that “Wang provides no disclosure or suggestion related to use of the pump embodiments with a . . . ‘lower limb prosthetic device.’” Id. In support of this argument, Appellant cites to declaration testimony from Dr. Mosler dated August 18, 2015, (Appendix I to the Appeal Brief, referred to as the “Mosler Dec.”) in which Dr. Mosler testifies, in my opinion, a person of ordinary skill in the art would find no basis to combine the teachings of Caspers and Wang, and such a person would not look at Caspers and Wang, individually or in combination, to teach a “lower limb prosthetic device” that Appeal 2020-003404 Application 13/296,816 15 includes a “vacuum pump” having “a pair of rigid wall members” and a wall having “flexible portions” (as recited in claim 13) or “an elastically deformable portion” (as recited in claim 32). There is no teaching or suggestion in Caspers and Wang that would motivate a person of ordinary skill in the art to include a pair of rigid wall members with a “closed-off fluid volume” of the vacuum pump between the pair of rigid wall members, particularly with the combination of inlet and outlet ports recited in claims 13 and 32. Furthermore, the complete lack of disclosure or suggestion by Caspers and Wang related to prosthetic devices would direct a person of skill in the art away from these references for teachings related to prosthetic devices. Mosler Dec. ¶ 3 (emphasis added); see also Appeal Br. 21 (quoting Mosler Dec. ¶ 3). Appellant’s arguments are not persuasive, as the Examiner does not rely on Shin for disclosing a vacuum pump or Wang for disclosing pumps for a lower limb prosthetic device. See Final Act. 8–9; see also Merck, 800 F.2d at 1097. The Examiner simply relies on Wang and Shin (in the alternative) for teaching inlet and outlet ports positioned at separate locations along a wall. See Final Act. 9 (citations omitted). We are also unmoved by Dr. Mosler’s testimony as it appears to be from a prior rejection not before us on appeal. Notably, the testimony does not address claim 40, but rather independent claims 13 and 32. See Mosler Dec. ¶ 3. Further, the testimony does not address Shin (id.), so even if we credited the testimony, it would not be persuasive as to Shin, which the Examiner relies on in the alternative to Wang (see Final Act. 8–9). Accordingly, Appellant does not persuade us of Examiner error in the rejection of claim 40, and we affirm the rejection of claim 40 as unpatentable over Caspers, Fikes, Phillips, Caspers ’278, and Shin or Wang. Appeal 2020-003404 Application 13/296,816 16 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13, 26, 27, 29, 30, 32, 34, 35, 37, 38 103 Caspers, Fikes, Phillips, Caspers ’278 13, 26, 27, 29, 30, 32, 34, 35, 37, 38 40 103 Caspers, Fikes, Phillips, Caspers ’278, and Shin or Wang 40 Overall Outcome 13, 26, 27, 29, 30, 32, 34, 35, 37, 38, 40 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation