5280 PROSTHETICS LLC

Patent Trials and Appeals Board

Apr 28, 2020

13689734 - (D) (P.T.A.B. Apr. 28, 2020)

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.
13/689,734 11/29/2012 Clint Accini 74053.00117 8297
20322 7590 04/28/2020
SNELL & WILMER L.L.P. (Main)
400 EAST VAN BUREN
ONE ARIZONA CENTER
PHOENIX, AZ 85004-2202
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/28/2020 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):
IPDOCKET@swlaw.com
chauff@swlaw.com
dgiancaterin@swlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLINT ACCINI, MICHAEL L. KAESSNER, and ROYCE HEC

Appeal 2019-006106
Application 13/689,734
Technology Center 3700
____________

Before JENNIFER D. BAHR, BENJAMIN D. M. WOOD, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, 5280 Prosthetics LLC,1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1–3, 6–11, 13–17, 19,
and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies itself as the sole real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Related Appeal
Appellant appealed rejections of claims in related Application No.
14/838,846, which rejections we affirmed in a decision entered April 6,
2020. See Appeal No. 2019-005260.
The Specification
The Specification “relates in general to the field of biomechatronics,
and more particularly to a prosthetic system having a vacuum pump
disposed therein.” Spec. ¶3.
The Claims
Claims 1–3, 6–11, 13–17, 19, and 20 are rejected. Final Act. 1. No
other claims are pending. Id. Claims 1, 8, and 15 are independent. Appeal
Br. 23–25 (Claims App.). Claim 1 is illustrative and reproduced below.
1. An apparatus for use with a prosthetic system, the
apparatus comprising:
a prosthetic socket, wherein the prosthetic socket
comprises a proximal end, a distal end, and a side wall
extending between the proximal end and the distal end, and
wherein the proximal end is open and the distal end is closed;
a housing disposed entirely within the prosthetic socket
and in contact with the distal end of the prosthetic socket, said
housing comprising:
a vacuum pump disposed within the prosthetic
socket, said vacuum pump comprising an intake port and
an exhaust port, wherein said vacuum pump is actuable
to maintain a negative air pressure within said prosthetic
socket, wherein said vacuum pump is electronically
activated;
a low pressure intake port in fluid communication
with the intake port of the vacuum pump and the interior
of said socket; and
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a high pressure exhaust port in fluid
communication with the exhaust port of the vacuum
pump and the high pressure side of the system.
Id. at 23.
The Examiner’s Rejections
The rejections before us are:
1. claims 2 and 11 under 35 U.S.C. § 112 ¶ 2 as being indefinite
(Final Act. 7);
2. claims 1–3, 6, 8–11, 13, 15–17, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Colvin2 (id. at 9);
3. claims 2, 3, 9, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Colvin (id.); and
4. claims 1–3, 6–11, 13–17, 19, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Laghi3 and Colvin (id. at 12).
DISCUSSION
Rejection 1—Indefiniteness
Appellant does not appeal the indefiniteness rejection of claims 2 and
11. Accordingly, we summarily affirm the rejection.
Rejections 2 and 3—Based on Colvin Alone
The Examiner rejected claims 1–3, 6, 8–11, 13, 15–17, and 19 as
anticipated by Colvin and claims 2, 3, 9, and 16 as unpatentable over Colvin.
Both of these rejections rely on the Examiner’s finding that, in Colvin’s
Figure 14B, the “(pump) housing is disposed entirely within a distal end of a

2 US 8,016,892 B2, issued Sept. 13, 2011 (“Colvin”).
3 US 2010/0262261 A1, published Oct. 14, 2010 (“Laghi”).
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prosthetic socket.” Final Act. 10. Appellant disputes this finding. Appeal
Br. 12–14; Reply Br. 2–3.
We turn first to the language of claim 1, which recites, in relevant
part:
a prosthetic socket, wherein the prosthetic socket
comprises a proximal end, a distal end, and a side wall
extending between the proximal end and the distal end, and
wherein the proximal end is open and the distal end is closed;
a housing disposed entirely within the prosthetic socket
and in contact with the distal end of the prosthetic socket, said
housing comprising:
a vacuum pump disposed within the prosthetic socket[.]

Appeal Br. 23 (Claims App.). Independent claims 8 and 15 include
extremely similar claim language. Id. at 23–25.
Colvin Figure 14B is reproduced below.

Colvin Figure 14B shows prosthetic limb 172. Colvin 13:21–22. Colvin
teaches:
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prosthetic limb 172 is provided with an evacuation device 176
comprised of at least a vacuum pump 182 and power source 184
residing within a housing 180 that is integral to a side wall of a
prosthetic socket 174. The housing 180 protrudes from the side
wall of the socket 174 and forms a chamber 186 within which the
vacuum pump 182 and power source 184 are retained. The
housing 180 may be a separate component that is laminated or
otherwise bonded to the socket 174 after the socket is formed.
Preferably, however, the housing 180 is formed along with the
socket 174.
Id. at 13:22–32. The Examiner found that Colvin’s prosthetic socket 174
and housing 180 together constitute a “prosthetic socket” within the meaning
of the claims and that Colvin’s chamber 186 would inherently have an
additional “housing” within the meaning of the claims. See Final Act. 9
(“Colvin et al teaches . . . a housing (inherent housing of vacuum pump 182)
disposed entirely within formed reservoir 186 of a prosthetic socket
(combination of 174, 180).” Id.
The Examiner further found that Colvin’s inherent “(pump) housing is
disposed entirely within a distal end of a prosthetic socket.” Id. at 10.
Critical to the latter finding is the Examiner’s construction of “the distal end
of the prosthetic socket” as encompassing the distal half of the socket.
Figure 14B of Colvin, as annotated by the Examiner, is reproduced below.
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Final Act. 10. Figure 14B shows Colvin’s prosthetic socket divided by the
Examiner into a proximal half and a distal half, and labelling them,
respectively, “proximal end” and “distal end.” Id.
The Examiner’s construction is unreasonably broad. The independent
claims recite “a side wall extending between the proximal end and the distal
end.” However, the Examiner’s annotated Figure 14B lacks a sidewall.
To account for a sidewall, the Examiner offers a second, alternatively
annotated Figure 14B. Final Act. 11. Yet it too relies on an unreasonably
broad construction of the claim. More specifically, it reads the independent
claims’ “side wall” onto only a relatively small portion of Colvin’s side wall
and labels the vast majority of Colvin’s side wall as either part of the
“proximal end” or “distal end” of the prosthetic socket. Id.
For the foregoing reasons, we reverse the rejections of claims 1–3, 6,
8–11, 13, 15–17, and 19 as anticipated by Colvin and claims 2, 3, 9, and 16
as unpatentable over Colvin.

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Rejection 4—Laghi and Colvin
The Examiner rejected claims 1–3, 6–11, 13–17, 19, and 20 as
unpatentable over Laghi and Colvin. Final Act. 12. Appellant argues these
claims together. Appeal Br. 15–19. We choose claim 1 as representative.
See 37 C.F.R. § 42.37(c)(1)(iv).
The Examiner found that Laghi teaches much of the subject matter of
claim 1 except that “Laghi teaches a mechanical pump and not an
electronically activated vacuum pump.” Final Act. 12–13. The Examiner
found that Colvin teaches an electrically actuated vacuum pump in a housing
disposed within a distal end of a prosthetic socket, along with intake and
exhaust ports. Id. at 13–15 (citing Colvin Fig. 10A). The Examiner
concluded:
It would have been obvious to one having ordinary skill in
the art to have substituted the electrically actuated pump of
Colvin for the mechanical pump of Laghi because “the present
invention overcomes the disadvantages inherent to known
prosthetic socket evacuation device using mechanical (e.g.
weight-activated) pumps.” “An electrically-activated
evacuation device of the present invention offers additional[]
advantages not possible with manual or gait driven device.” See
all the advantages stated in the “Summary of the Invention” of
Colvin (column 2, line 55 – column 3, line 35). Further, simple
substitution of the electrically controlled pump of Colvin et al for
the mechanical pump of Laghi would have obtained predictable
results. Substitution would result in an electrically actuated
pump/housing entirely within a distal end of the prosthetic socket
and in contact with the distal end of the socket. Any mechanical
modification to the combination apparatus would have been
obvious to one having ordinary skill in the art.
Id. at 15.
Appellant argues that “the examiner has not identified any ‘reason that
would have prompted a person of ordinary skill in the relevant field to
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combine the elements in the way the claimed new invention does.’” Appeal
Br. 16 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
This argument is not persuasive. The Examiner has identified simple
substitution as the reason and has explained how that substitution would
have resulted with subject matter within the scope of claim 1. See Final Act.
15.
Appellant argues that “there is no rationale on the record to support a
finding that [a person of ordinary skill in the art] ‘would have seen the
benefits of’” combining Laghi and Colvin as proposed by the Examiner. Id.
(quoting KSR, 550 U.S. at 422). This argument is not persuasive. The
Examiner quoted Colvin’s explicit teaching that its use of an electronically
activated vacuum pump “overcomes the disadvantages inherent to known
prosthetic socket evacuation device using mechanical (e.g. weight-activated)
pumps.” Final Act. 15 (quoting Colvin 2:57–59).
Appellant argues that “[t]he mechanical pump of Laghi and the
electrical pump of Colvin are fundamentally different and thus not
interchangeable without significant additional engineering.” Appeal Br. 16–
17. This argument does not apprise us of Examiner error. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). “Rather, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id.; see also Orthopedic Equip. Co. v. United
States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“There is a distinction
between trying to physically combine the two separate apparatus disclosed
in two prior art references on the one hand, and on the other hand trying to
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learn enough from the disclosures of the two references to render obvious
the claims in suit. . . . Claims may be obvious in view of a combination of
references, even if the features of one reference cannot be substituted
physically into the structure of the other reference.”).
Appellant argues that Colvin “teaches away from including a housing
containing such a pump fully within a chamber, noting that the use of a
distal adapter allows for interchangeability of various suspension devices
(Colvin, 10:61-66) and the insufficiency of existing weight operated pump
systems (Colvin, 2:15-50).” Appeal Br. 17. This argument is not
persuasive. As found by the Examiner and not contested by Appellant,
Laghi teaches a housing containing a pump fully within a chamber. Final
Act. 12–13 (reproducing and referring to Laghi Fig. 1). And, as further
found by the Examiner, “Colvin et al teaches an apparatus for use with a
prosthetic system comprising various configurations for placement of a
vacuum pump relative to a prosthetic socket.” Id. at 13 (citing Colvin
Figures generally). In view of these undisputed prior art teachings,
Appellant’s “teaching away” argument is utterly unpersuasive.
Finally, Appellant argues that the rejection relies on impermissible
hindsight bias. Appeal Br. 18–19. This argument is not persuasive because,
as already discussed, the rejection instead employs simple substitution
reasoning, which is supported by explicit teachings in the prior art. See In re
Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (“By requiring the Board to
explain the motivation, suggestion, or teaching as part of its prima facie
case, the law guards against hindsight in all cases.”).

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For the foregoing reasons, we affirm the rejection of claim 1, as well
as that of claims 4–6, 8, 9, 11–14, 16, 19, 22, and 23, which fall therewith.
See 37 C.F.R. § 42.37(c)(1)(iv).

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
2, 11 112 ¶2 indefiniteness 2, 11
1–3, 6, 8–11,
13, 15–17, 19
102(b) Colvin 1–3, 6, 8–
11, 13,
15–17, 19
2, 3, 9, 16 103(a) Colvin 2, 3, 9, 16
1–3, 6–11,
13–17, 19, 20
103(a) Laghi, Colvin 1–3, 6–11,
13–17, 19,
20

Overall
Outcome
1–3, 6–11,
13–17, 19,
20

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