5280 Prosthetics LLC

Patent Trials and Appeals Board

Apr 6, 2020

14838846 - (D) (P.T.A.B. Apr. 6, 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.
14/838,846 08/28/2015 Clint Accinni 74053.00136 2213
20322 7590 04/06/2020
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
04/06/2020 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 ACCINNI, MICHAEL L. KAESSNER, and
ROYCE HECK

Appeal 2019-005260
Application 14/838,846
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 43–62. 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
The Specification
The Specification “relates in general to the field of biomechatronics,
and more particularly to a wireless intelligent prosthetic system having real
time diagnostics and active user feedback.” Spec. ¶2.
The Claims
Claims 43–62 are rejected. Final Act. 1. No other claims are
pending. Id. Claims 43, 51, and 62 are independent. Appeal Br. 23–27
(Claims App.). Claim 43 is illustrative and reproduced below.
43. An apparatus for use with a prosthetic system, the
apparatus comprising:
a controller configured to gather data and derive prosthetic
information from a plurality of sensors, and configured to transmit
said prosthetic information using a wireless radio link,
wherein said controller and said plurality of sensors are
disposed within a housing that is contained within an interior
cavity of a prosthetic socket, said prosthetic socket adapted to
receive a residual limb into said interior cavity, said residual
limb having a cover, said prosthetic socket comprising a
reservoir within said interior cavity inside, said housing
disposed within said interior cavity, and
wherein said housing presents a first surface for
contacting a second surface of said covered residual limb when
inserted into said interior cavity;
a pump, wherein the pump is coupled to said controller and
wherein the pump is operable to maintain a prescribed negative air
pressure within said prosthetic socket, and wherein the pump is
disposed within the housing; and
a wireless smart device coupled to said controller via said
wireless radio link.
Id. at 23.
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The Examiner’s Rejections
The Examiner’s rejections before us are:
1. claims 43–62 pursuant to non-statutory (obviousness-type)
double patenting over claims 1–42 of US 9,119,735, issued Sept. 1, 2015
(Final Act. 6); and
2. claims 43–62 pursuant to 35 U.S.C. § 103(a) over Colvin2 and
Laghi3 as evidenced by Caspers4 (id. at 7).
DISCUSSION
Rejection 1—Double Patenting
Appellant does not argue against this rejection. See Appeal Br. 5.
Accordingly, we summarily affirm it.
Rejection 2—Obviousness
Appellant argues these claims together. Appeal Br. 12–19. We
choose claim 43 as the representative claim upon which to decide the
rejection of all claims. See 37 C.F.R. § 42.37(c)(1)(iv).
Colvin “is directed to electrically-powered evacuation devices for use
in evacuating a prosthetic socket and/or to prosthetic limbs incorporating
such electrically-powered evacuation devices.” Colvin ¶2. The Examiner
finds that Colvin teaches the subject matter of claim 43 except that it “is
unclear as to the socket comprising a reservoir within the interior cavity for

2 US 2007/0191965 A1, published Aug. 16, 2007 (“Colvin”). As noted by
the Examiner, Colvin issued as US 8,016,892 B2, on Sept. 23, 2011
(“Colvin as issued”). Final Act. 7.
3 US 2010/0262261 Al, published Oct. 14, 2010 (“Laghi”).
4 US 2004/0167638 Al, published Aug. 26, 2004 (“Caspers”). The
Examiner cites Caspers as evidence only with respect to his findings for
dependent claims 48 and 59. Final Act. 10.
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holding the pump/housing.” Final Act. 7–9 (citing ¶¶78, 136, 157, 182,
Figs. 10A, 12).5
Laghi “relates generally to prosthetic devices and, more particularly,
to a valve assembly for use with a prosthetic limb socket.” Laghi ¶2. The
Examiner found that Laghi teaches an apparatus for use with a prosthetic
system mounted on a residual limb. Final Act. 9. The Examiner further
found that the Laghi apparatus has a socket comprising a reservoir that
contains a housing with a mechanical pump that presents a surface for
contacting the covered residual limb. Id. (reproducing Laghi Fig. 1).
The Examiner concluded that the subject matter of claim 1 would
have been obvious in view of these teachings by modifying Colvin in view
Laghi and vice versa. Id. In particular, the Examiner proposed the
following modifications and supporting rationales:
It would have been obvious to one skilled in the art to have
extended the [pump] reservoir of Colvin et al as taught Laghi
which is combining prior art elements according to known
methods to yield predictable results. (See MPEP 2143, I.
Exemplary Rationales) Reasoning: extending the reservoir
allows for a direct connection of a pylon to the socket and not
through the pump housing. Further, it would have been obvious
to one having ordinary skill in the art to have substituted the
socket of Laghi for the socket of Colvin to obtain predictable
results.
. . . It would have been obvious to one having ordinary
skill in the art to have substituted the [electrical] pump/housing
of Colvin et al[.] for that of Laghi to obtain predictable results.
Also, it would have been obvious to one skilled in the art to have

5 The Examiner reproduced Figure 10A of Colvin and Figure 12 from
Colvin as issued. Final Act. 8. Figure 12 from Colvin as issued is very
similar to Figure 12 from Colvin. Appellant has not raised an issue with the
Examiner’s reliance on Figure 12 from Colvin as issued, and we see none.
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substituted [Colvin’s] electrical pump for [Laghi’s] mechanical
pump for the advantages of controlled pumping via the controller
and monitoring via the mobile device. Any modifications
necessary to place/drop the housing with the electrical pump of
Colvin et al[.] into the reservoir of Laghi would have been
obvious to one having ordinary skill in the art.
Final Act. 9–10.
Appellant presents multiple arguments against the rejection. Some of
Appellant’s arguments can be classified as bodily incorporation arguments.
For example, Appellant argues that Laghi’s “extension 11 is not capable of
containing additional elements, as the only open space in extension 11 is air
reservoir 2, which is designed to provide air to escape from the socket.”
Appeal Br. 14. Similarly, Appellant argues that “placing a pump fully inside
a socket requires careful design that cannot be accomplished merely by
dropping an electric pump into a longer socket.” Id. at 15; see also id. at 16
(“[T]he design of [Colvin’s] evacuation device 80 would have to be
substantially altered to work in an elongated socket.”); Reply Br. 3
(enumerating five bodily incorporation arguments). Such arguments do not
apprise us of error. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“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 what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”); 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
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
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references, even if the features of one reference cannot be substituted
physically into the structure of the other reference.”).
Other of Appellant’s arguments merely point out neither Colvin nor
Laghi discloses all of the claimed subject matter. For example, Appellant
argues that “Laghi does not teach a controller or sensors disposed within
prosthetic socket 8.” Appeal Br. 14. Similarly, Appellant argues:
[N]either Colvin nor Laghi disclose a housing containing a
controller, a plurality of sensors, and a pump, wherein the
housing is contained within an interior cavity of a prosthetic
socket...the prosthetic socket having a reservoir within said
interior cavity inside of which said housing is disposed, and
wherein the housing presents a first surface for contacting a
second surface of a covered residual limb when inserted into said
interior cavity, as recited in claim 43.
Id. at 14; see also Reply Br. 3 (“Neither of the asserted prior art references
discloses these features.”). Such arguments do not apprise us of error
because they are not commensurate with the rejection, which is based on a
combination of prior art teachings. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
This is not to say, of course, that what a reference individually teaches
is not relevant. And, in that regard, Appellant does present one apposite,
albeit ultimately unpersuasive, argument. More specifically, Appellant
argues that “contrary to the Examiner’s assertions, Colvin does not disclose
that evacuation device 80 ‘presents a first surface for contacting a second
surface of said covered residual limb,’ as recited in independent claims 43,
51, and 62.” Appeal Br. 13. Appellant explains that “distal adapter 88 is not
a part of evacuation device 80 – it is a separate device affixed or integrated
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into the prosthetic socket 78 that is designed to allow evacuation device to
mate to the distal end of the prosthetic socket.” Id. (citing Colvin ¶66).
The Examiner answers this argument first by pointing out that, in
Colvin, “proximal (mounting) face 88a of the distal adapter 88 that resides
interior to the socket 78 is preferably, but not necessarily, concave, to better
receive the distal end of the residual limb.” Ans. 9 (quoting Colvin ¶66
(Examiner’s emphasis)). The Examiner further answers that no claim
language precludes the “housing” of claim 43 from “comprising integral
parts” such as Colvin’s prosthetic socket 78 and mated adapter 88. Id. In
other words, the claim term “housing” is not limited to a single-component
structure.
Appellant filed a Reply Brief but it does not rebut the Examiner’s
analysis on this point. See Reply Br. 3 (merely arguing that “[n]either of the
asserted prior art references discloses” the limitation at issue).
The Examiner’s construction of “housing” as not limited to single-
component structures indeed is correct. Thus, Appellant does not apprise us
of error in the Examiner’s finding that Colvin’s adapter 88 is part of a
housing or that it “presents a first surface for contacting a second surface of
said covered residual limb when inserted into said interior cavity,” as recited
in claim 43.
Appellant also argues that the Examiner’s proposed modifications of
the prior art (i.e., Colvin view of Laghi and vice versa) do not involve mere
simple substitutions and are “not supported . . . with the required findings.”
Appeal Br. 14. Appellant elaborates that “it is unclear what pylon the
Examiner is referring to, as the embodiments of Colvin and Laghi cited in
the Office Action do not include a pylon, and the Office Action does not
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mention a pylon other than this one instance.” Id. at 15 (referring to Final
Act. 9: “[E]xtending the reservoir allows for a direct connection of a pylon
to the socket and not through the pump housing.”).
Both Colvin and Laghi evince that pylons are common parts of
prosthetic limb systems. See, e.g., Colvin ¶45 (“The prosthesis includes a
socket 12 for receiving an amputee’s residual limb, a column (pylon) 14,
which is typically a cylindrical section of lightweight metal such as
aluminum, and an artificial foot 17.”); Laghi ¶3 (“A prosthesis for a lower
extremity amputation will often include an artificial foot connected to an
upright assembly (pylon, tube or shaft) which is in turn connected to a
custom fitted socket assembly.”). Hence, the Examiner’s finding that a
person of ordinary skill in the art would be motivated to modify Colvin in
view of Laghi in order to allow for a direct connection with a pylon has
rationale underpinnings.
With respect to the vice versa modification, Appellant argues that a
person of ordinary skill in the art would not have modified Laghi by
substituting Colvin’s electrical pump for Laghi’s mechanical pump because
the “alleged advantages are all included in the device of Colvin, without
need for reference to Laghi.” Appeal Br. 17. Appellant does not cite any
case law to support such a legal theory. Rather, if such advantages could
also be obtained in the proposed modification of Laghi, such a modification
would have been obvious, absent unpredictable results, which Appellant has
not shown. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“[W]hen a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.”). It
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would have been obvious to those skilled in the art to substitute one known
equivalent (electrical pump) for another (mechanical pump). See In re
Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007); see
also KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Appellant also argues that “the only teaching on record of the need for
incorporating a housing as recited in claim 43 within a prosthetic socket
comes from the present application itself” and “therefore” the rejection relies
on “improper hindsight.” Appeal Br. 18; see also Reply Br. 4 (“In fact, of
the references at issue, only the Appellant’s application specifically
identifies problems that stem from external electric pumps and sensors
mounted externally to a socket.”). But “neither the particular motivation nor
the avowed purpose of the [applicant] controls.” KSR, 550 U.S. at 419. The
Supreme Court held in KSR:
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve. The Court of Appeals failed to recognize that the
problem motivating the patentee may be only one of many
addressed by the patent’s subject matter. The question is not
whether the combination was obvious to the patentee but whether
the combination was obvious to a person with ordinary skill in
the art. Under the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by
the patent can provide a reason for combining the elements in the
manner claimed.
Id. at 420. Here, the Examiner showed that the prior art (i.e., Laghi) teaches
a feature (i.e., incorporating a housing within a prosthetic socket) and the
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Examiner provided reasons for incorporating that feature into Colvin, to
allow for a direct connection of a pylon to the socket and simple
substitution. Final Act. 8–9. That is sufficient. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.”).
Finally, Appellant argues that, “[e]ven if the Examiner had provided a
sufficient basis for a prima facie obviousness combination, the resulting
combination would not function as asserted in the Office Action or as recited
in the present claims.” Appeal Br. 19. This argument, however, is premised
on Appellant’s prior and unpersuasive argument that Colvin’s adapter is not
part of a “housing,” within the meaning of claim 43. Id. It is not persuasive
here either.
For the foregoing reasons, we affirm the rejection of claim 43, as well
as that of claims 44–62, which fall therewith. 37 C.F.R. § 42.37(c)(1)(iv).

SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
43–62 non-statutory
double patenting
43–62
43–62 103 Colvin, Laghi,
Caspers
43–62
Overall
Outcome
43–62

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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