SWELLING SOLUTIONS, INC.

Patent Trials and Appeals Board

Mar 2, 2022

2021004462 (P.T.A.B. Mar. 2, 2022)

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. 15/850,257 12/21/2017 Carl Estcourt Tucker 0408.000011US02 3410 26813 7590 03/02/2022 MUETING RAASCH GROUP 111 WASHINGTON AVE. S., SUITE 700 MINNEAPOLIS, MN 55401 EXAMINER LOUIS, LATOYA M ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): ptodocketing@mrgs.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARL ESTCOURT TUCKER, TROY A. BAKER, GRAHAM PETER WILSON, PATRICK GERRARD LINNANE, IAN STEWART TABRON, WAYNE LEE BONNEFIN, STEFAN LOOF, and THOMAS BERGENS Appeal 2021-004462 Application 15/850,257 Technology Center 3700 Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. WOOD, 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 23-43. Claims 1-22 have been canceled. Appeal Br., Claims App. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Swelling Solutions, Inc. Appeal Br. 2. Appeal 2021-004462 Application 15/850,257 2 CLAIMED SUBJECT MATTER The claims are directed to “a control unit assembly for use with a mobile compression device suited for use in the treatment of venous leg ulcers, oedema, deep vein thrombosis and vascular disorders.” Spec. 1:5-8. Claim 23, reproduced below, is illustrative of the claimed subject matter: 23. A compression device comprising: a sleeve wearable on a limb of a patient, the sleeve defining an outer surface; one or more inflatable cells coupled to the sleeve to apply pressure to the limb of the patient; a pump coupled to the sleeve between the outer surface of the sleeve and the one or more inflatable cells; a control unit coupled to the sleeve between the outer surface of the sleeve and the one or more inflatable cells, the control unit operably coupled to the pump to control flow of fluid from the pump to the one or more inflatable cells; and a power source coupled to the sleeve between the outer surface of the sleeve and the one or more inflatable cells, the power source operably coupled to the pump and control unit to provide power to the pump and control unit, wherein the pump, the control unit, and the power source are integrated into the sleeve to follow the contour of the sleeve. REFERENCE Name Reference Date Biondo US 2006/0258964 A1 Nov. 16, 2006 REJECTIONS2 Claims Rejected 35 U.S.C. § References 23, 28-31, 36-43 102 Biondo 24-27, 32-35 103 Biondo 2 The Examiner also rejects claim 1 under the judicially created doctrine of double patenting as being unpatentable over claim 1 of U.S. Pat. No. Appeal 2021-004462 Application 15/850,257 3 OPINION Claims 23, 28-31, and 36-43-§ 102-Biondo Appellant separately argues independent claims 23, 31, and 39, and dependent claims 28 and 36. We select claim 23 as representative of claims 23, 29, 30, and 43; claim 31 as representative of claims 31, 37 and 38; and claim 39 as representative of claims 39-42. 37 C.F.R. § 41.37(c)(1)(iv). Claims 28 and 36 will be discussed separately. Claim 23 Claim 23 recites a compression device comprising a wearable sleeve with an outer surface and one or more inflatable cells to apply pressure to the limb of a patient; and a pump, control unit, and power source “integrated into the sleeve to follow the contour of the sleeve.” Appeal Br., Claims App. 1. The Examiner finds that Biondo’s compression sleeve 630 corresponds to the claimed wearable sleeve having one or more inflatable cells coupled to it; and compression module 1034, which contains pressure generator 1024, electric circuit 1029, and battery 1022, corresponds to the claimed pump, control unit, and power source integrated into the sleeve to follow the contour of the sleeve. Final Act. 2-3 (citing Biondo ¶¶ 123-124, Figs. 11, 29). Appellant responds that Biondo “does not describe that the pump, the control unit, and the power source are integrated into the sleeve to follow the contour of the sleeve.” Appeal Br. 7 (emphasis omitted). Instead, according to Appellant, “the module (which is inserted into the portion 636 of the 10,092,250 B2. Final Act. 9. Claim 1, however, has been canceled. Appeal Br., Claims App. 1. Therefore, this rejection is not before us. Appeal 2021-004462 Application 15/850,257 4 pocket 634) bulges away from the main sleeve portion 632 and does not follow the contour of the sleeve portion 632.” Id. (emphasis omitted). Appellant asserts that Biondo’s module “defines squared corners and sharp edges that would cause problems with surrounding environment and clothing worn over the module.” Id. at 8 (emphasis omitted). The Examiner disagrees that Biondo’s module 1034 does not follow the contour of the sleeve. Ans. 8. The Examiner asserts that “[t]he entire sleeve (630) includes pocket 634 such that the module located in pocket 634 follows the contour of the sleeve 630 and is low profile as it is able to fit into a pocket.” Id. The Examiner also notes that the term “contour” is “not specifically defined.” Id. Appellant responds that the Examiner is incorrect that Biondo’s compression sleeve 630-which includes “main sleeve portion 632 and a pocket (634)”-corresponds to the claimed compression sleeve. Reply Br. 2. Instead, according to Appellant: [T]he main sleeve portion 632 of Biondo et al. and the pocket 634 of Biondo et al. are separate components of the compression sleeve 630 of Biondo et al. Therefore, Appellant submits that the compression sleeve 630 of Biondo et al. describes the device as a whole (e.g., the claimed compression device), while the main sleeve portion 632 of Biondo et al. describes the sleeve garment of the device (e.g., the claimed sleeve). Further, Biondo et al. describes that the pocket 634 is situated on the main sleeve portion 632. See Biondo et al., paragraph [0124]. As such, using a correct interpretation equating the main sleeve portion 632 of Biondo et al. to the claimed sleeve, the module within the pocket 634 of Biondo et al. cannot be integrated into the main sleeve portion 632 of Biondo et al. because the pocket 634 is a separate component that is situated on and extending from the main sleeve portion 632. Appeal 2021-004462 Application 15/850,257 5 Reply Br. 2-3 (emphasis omitted). We are not persuaded of Examiner error. Appellant’s argument is premised on a construction of “sleeve” that would exclude any external pocket, such as Biondo’s pocket 634. We are not persuaded, however, that this construction is correct. First, Appellant’s proposed construction is based on extrinsic evidence-Biondo’s disclosure-rather than intrinsic evidence-the claims and Specification. “To ascertain the scope and meaning of the asserted claims, we look to the words of the claims themselves, the specification, the prosecution history, and, lastly, any relevant extrinsic evidence.” In re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1315-17 (Fed. Cir. 2005) (en banc) (emphasis added)). Although we may consider extrinsic evidence, such evidence is generally of less significance than the intrinsic record. Phillips, 415 F.3d at 1317 (citing C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004)). A review of the intrinsic evidence, particularly the language of claim 23, indicates that one of ordinary skill in the art would consider the pocket to be part of the sleeve. Claim 23 recites that the pump, control unit, and power source be “coupled to the sleeve between the outer surface of the sleeve and the one or more inflatable cells.” Appeal Br., Claims App. 1. In the embodiment depicted in Figure 1 (the only embodiment described in the Specification), control unit 10-which contains a pump, battery, and control circuitry-is located between the outer surface of pouch 12 and the inflatable cells. Spec. 3:2-4, 6:13-15, 8:2-11. Pouch 12 is described as “provided on sleeve 2.” Id. at 8:9. For this embodiment to be encompassed within the scope of claim 23, i.e., for control unit 10 to be “between the Appeal 2021-004462 Application 15/850,257 6 outer surface of the sleeve and the one or more inflatable cells,” pouch 12 must be considered part of sleeve 2. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (holding that claim interpretation that excludes preferred embodiment is “rarely, if ever, correct”). Because pouch 12 is part of sleeve 2, one of ordinary skill in the art would likely agree with the Examiner that the term “sleeve” as used in claim 23 should be read to include any external pockets, and that Biondo’s compression sleeve 630, which includes pocket 634, corresponds to the claimed sleeve.3 Further, Appellant has not proffered any construction for “the contour of the sleeve,” and no express construction of this term is evident in the Specification.4 Nor does there seem to be any requirement that the sleeve’s contour match the contour of the limb on which the sleeve is worn, or that pump, control unit, and power source follow the contour of the outer surface of the sleeve as opposed to the inner surface. Appellant argues that Biondo’s module does not “follow the contour of the sleeve” because it “bulges away” from main sleeve portion 632, but as evident from Figures 1 and 2 of Appellant’s Specification, the same can be said for control unit 10 in pouch 12 of Appellant’s device. Thus, it is unlikely that “follow[ing] the contour of the sleeve” prohibits any so called “bulging.” 3 We also note that the Specification teaches that the control unit “follows the contour of the device.” Spec. 8:10-11 (emphasis added); see also Spec. 4:29-30 (describing the pouch as “within the outer contour of the device”). We have found no disclosure in the Specification regarding a control unit following the contour of a “sleeve,” per se. Therefore, the Specification does not support a clear delineation between “device” and “sleeve,” as Appellant’s argument suggests. Reply Br. 2. 4 The term also lacks an antecedent basis. Appeal 2021-004462 Application 15/850,257 7 In sum, we are not persuaded that the Examiner erred in the rejection of claim 23 as anticipated by Biondo, and sustain the Examiner’s rejection of 23, 29, 30, and 43 on that basis. Claim 31 Claim 31 recites a compression device in which the pump, control unit and power source are “integrated with the sleeve within the outer contour of the sleeve.” As with claim 23, Examiner finds that Figure 29 of Biondo depicts an embodiment in which the pump, control unit and power source are integrated into the outer contour of the sleeve. Final Act. 4. In response, Appellant repeats, essentially verbatim, the arguments made with respect to claim 23, which we found unpersuasive. Appeal Br. 10-12; Reply Br. 3-4. For the reasons discussed above, we find these arguments unpersuasive. Accordingly, we sustain the Examiner’s rejection of claims 31, 37, and 38 as anticipated by Biondo. Claim 39 Claim 39 recites a compression device comprising a “sleeve defining an outer surface” and “a plurality of low-profile components positioned within the outer surface of the sleeve.” Appeal. Br., Claims App. 4. Examiner finds that Biondo’s compression sleeve 630 corresponds to the claimed “sleeve defining an outer surface,” and that compression module 1034, which contains a pump, control unit, and power source, corresponds to the “plurality of low-profile components positioned within the outer surface of the sleeve.” Final Act. 5 (citing Biondo ¶¶ 123-124, Figs. 11, 29). The Examiner finds that Figure 29 of Biondo shows that the components within compression module 1034 are low profile because they are “able to fit into” pocket 634. Id. Appeal 2021-004462 Application 15/850,257 8 In response, Appellant argues that compression module 1034 is not “low-profile” when it is inserted into pocket 634 because it “bulges away from the main sleeve portion 632 and is not low-profile relative to the sleeve portion 632.” Appeal Br. 12 (emphasis omitted). This argument is based on Appellant’s construing “sleeve” to exclude pocket 634. Id. at 13-14. As discussed above, however, we are not persuaded that this construction is correct. Further, Appellant does not proffer a construction of “low-profile,” or otherwise provide evidence or persuasive technical reasoning why one of ordinary skill in the art would not consider the components within Biondo’s compression module 1034 to not be “low profile.” Therefore, we are not persuaded that the Examiner erred in rejecting claim 39 as anticipated by Biondo, and sustain the Examiner’s rejection of claims 39-42 on that basis. Claim 28 Claim 28 depends from claim 23 and additionally recites that the compression device comprises “one or more conduits coupled to the sleeve and positioned entirely between the outer surface of the sleeve and the one or more inflatable cells.” Appeal Br., Claims App. 2. The Examiner finds that conduits 640 depicted in Figure 29 of Biondo corresponds to the claimed conduits. Final Act. 3 (citing Biondo ¶ 124). The Examiner finds that as shown in Figure 29 “the conduits extend entirely from exterior portions of the sleeve to interior inflatable cells,” and “extend into the pocket.” Id. Appellant responds that conduits 640 “clearly extend out of the pocket 634 and through a slit 642 formed in the main sleeve portion 632.” Appeal Br. 14. Appellant asserts that, as a result, conduits 640 “are not entirely within the sleeve as would be required to anticipate claim 28.” Id. at 14-15. Appeal 2021-004462 Application 15/850,257 9 In the Answer, the Examiner counters that conduits 640 “extend from an outer surface of the sleeve pocket to the inflatable cells,” and thus “are interior of the outermost perimeter.” Ans. 9. We agree with Appellant that Biondo’s conduits 640 are not “positioned entirely between the outer surface of the sleeve and the one or more inflatable cells,” as claim 28 requires. As Figure 29 shows, a portion of conduits 640, from the bottom of pocket 634 to slit 642, is located outside of the outer surface of compression sleeve 630. Therefore, we do not sustain the Examiner’s rejection of claim 28 as anticipated by Biondo. Claim 36 Claim 36 depends from claim 31 and further recites “one or more conduits integrated with the sleeve and positioned entirely within the outer contour of the sleeve.” Appeal Br. 4 (Claims App.). As with claim 28, the Examiner relies on Biondo’s conduits 640, depicted in Figure 29, as corresponding to this limitation. Final Act. 5. As discussed above, however, a portion of the conduits is located outside of the outer contour of sleeve 630, such that they are not “positioned entirely within the outer contour of the sleeve.” Accordingly, we do not sustain the Examiner’s rejection of claim 36 as anticipated by Biondo. Claims 24-27 and 32-35-§ 103-Biondo Appellant does not separately argue the patentability of claims 24-27 and 32-35, but relies on arguments made in support of the patentability of the independent claims from which these claims depend. Appeal Br. 17. Because we found these arguments unpersuasive, we sustain the Examiner’s rejection of claims 24-27 and 32-35 under 35 U.S.C. § 103 as unpatentable over Biondo. Appeal 2021-004462 Application 15/850,257 10 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 23, 28-31, 36-43 102 Biondo 23, 29-31, 37-43 28, 36 24-27, 32- 35 103 Biondo 24-27, 32- 35 Overall Outcome 23-27, 29- 35, 37-43 28, 36 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 IN PART