Lüder MOSLER et al.

Patent Trials and Appeals Board

Jan 8, 2021

2020003404 (P.T.A.B. Jan. 8, 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.
13/296,816 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.
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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
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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.
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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:

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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:
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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:
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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:
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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.
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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
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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.
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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.
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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
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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.).
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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
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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.
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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