Ex Parte Danzig et al

Patent Trial and Appeal Board

Sep 4, 2014

12286474 (P.T.A.B. Sep. 4, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MORRIS J. DANZIG and DONALD RAY MCKINNEY
__________

Appeal 2013-003288
Application 12/286,474
Technology Center 3700
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
vacuum system for maintaining a negative pressure in a cavity between a
socket of a prosthetic device and a residual limb. The Examiner rejected the
claims on obviousness and obviousness-type double patenting grounds, as
well as certain claims for being in an improper dependent form. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse the obviousness rejection
and summarily affirm the other rejections.

1 Appellants identify the Real Party in Interest as Lincolnshire
Manufacturing, LLC (see App. Br. 1).
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Application 12/286,474

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STATEMENT OF THE CASE
Background
The Specification is a directed to a prosthetic vacuum system
designed to hold an artificial limb in place. The disadvantages of prior art
vacuum systems included “size and weight,” as well as a “short battery life
because of the constant need to regain an acceptable vacuum level” (Spec.
2–3). The invention described in the Specification
[P]rovides an improved vacuum system for a prosthetic device
using a vacuum source which is connected to the socket cavity
thereby drawing the residual limb and liner into firm and total
contact with the socket, in which a surge chamber allows the
vacuum between the residual limb and the prosthetic device to
be sustained for longer periods of time, thus reducing
substantially the drain on the battery source [and providing
longer periods of time between pumping]

(id. at 3). According to the Specification, “[t]he current invention provides
excellent control of vacuum range and maintain continuous vacuum during
long periods of inaction that will not happen with a mechanically actuated
vacuum pump” (id. at 4).
The Claims
Claims 1–11 and 16–19 are on appeal. Independent claim 1 is
representative, and reads as follows:
1. A vacuum system for maintaining a negative pressure in a cavity
between a socket of a prosthetic device and a residual limb on which the
prosthetic device is attached, the prosthetic device having a foot portion and
a heel portion, the system comprising:
a vacuum pump assembly; and
a vacuum surge chamber having a total volume in the range of from
about 1.0 to about 1.75 cubic inches and capable of being secured between a
foot portion and a heel portion of a prosthetic device, the vacuum surge
chamber being capable of operative connection to a prosthetic socket and
Appeal 2013-003288
Application 12/286,474

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to the vacuum pump assembly and maintained by the vacuum pump
assembly at a negative pressure.

The Issues

In an Office Action dated February 14, 2012, the Examiner rejected
the claims as follows:
I. Claims 1–5, 7–11, and 16–19 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Haines2 and Segerstad.3
II. Claim 6 under 35 U.S.C. § 103(a) as being unpatentable over
the combination of Haines and Segerstad, as further combined
with Dean.4
III. Claims 1–11 and 16–19 provisionally under nonstatutory
obviousness-type double patenting grounds as unpatentable
over claims 1-19 and 22-25 of copending Application No.
11/640,150.5
IV. Claims 16 and 18 under 35 U.S.C. § 112 ¶ 4 as being of
improper dependent form for failing to further limit the subject
matter of independent claims 1 and 7.
As Appellants have not challenged the provisional non-statutory
obviousness-type double patenting rejection (Rejection III) or the rejection
of claims 16 and 18 for being in improper dependent form (Rejection IV) in
their Appeal Brief, we summarily affirm those rejections. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to

2 Haines et al., US 2006/0282175 A1, published Dec. 14, 2006.
3 Segerstad, US 2,686,532, issued Aug. 17, 1954.
4 Dean, JR. et al., US 2002/0099450 A1, published July 25, 2002.
5 Application No. 11/640,150 is the subject of a related appeal, No. 2012-
005289, which we decide concurrently with this Opinion.
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Appeal 2013-003288
Application 12/286,474

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FF3. Haines discloses:
As can be seen in FIG. 3, the ribbon 28 forms a loop surrounding
the power source 20 and the vacuum pump 22 so that those
components may be withdrawn from the pylon 14 by pulling at the
ends 28a and 28b of ribbon which extend to the bottom end of
pylon. FIG. 3 further illustrates the vacuum and electrical circuits
formed by the various components of the prosthetic device 10.
Specifically, an electrical circuit is formed by the electrical
connections 24, the positive and negative contacts of the power
source 20 and the positive and negative terminals of vacuum pump
22. As can be seen, one electrical connection directly connects one
terminal of the power source 20 to one terminal of vacuum pump
22, while further electrical connections connect the other terminal
of the power source to the other terminal of vacuum pump via
electrical switch 16. Thus, by closing electrical switch 16,
electrical power is supplied to the vacuum pump 22, causing the
vacuum pump to operate and evacuate the socket 12.

(Id. at ¶ 46.)
FF4. Haines teaches that “a vacuum pump is preset to draw a particular
level of vacuum once activated” (id. at ¶ 122). Haines further
teaches that with the addition of either logic or a microprocessor,
“it is possible to monitor socket pressure and automatically
maintain the socket pressure within a patient or practitioner
defined range of acceptable pressures” (id. at ¶ 123). Haines also
discloses that “by appropriately locating a basic pressure
transducer in the prosthetic socket, the measuring and tracking of
various pressure values associated with the prosthetic socket
becomes possible” (id. at ¶ 124).
FF5. Segerstad is directed to “a balanced pressure or vacuum regulator,
comprising a chamber, the pressure in which is controlled by a
pressure control valve,” wherein the “pressure control valve is
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Appeal 2013-003288
Application 12/286,474

7
the partition 2 with the interior 12 of a membrane 13, which is
arranged within the chamber 3 and has the form of a bellows and
which preferably consists of a metallic material” (id. at col. 1 ll.
34–39). Additionally, “[w]ithin the bellows 13, there is provided
another similar bellows 20, which is mechanically connected at its
top with the bellows 13 and whose interior communicates at the
bottom with the surrounding atmosphere through the intermediate
of a channel 21” (id. at col. 1 l. 51–col. 2 l. 2).
FF8. Segerstad discloses that “[t]he bellows 20 serves to damp the
process of regulation at rapid pressure variations” (id. at col. 2 ll.
6–7).
PRINCIPLES OF LAW
“[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements. Instead, there must be some
articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . however, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted)
(emphasis added).
ANALYSIS
Each of independent claims 1, 7, and 15 require a “vacuum surge
chamber” that is “operatively connected” or “capable of operative
connection” with a prosthetic device socket and vacuum pump assembly
(Cls. 1, 7, 15). The issue presented on appeal is whether it would have been
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Application 12/286,474

8
obvious to incorporate the claimed vacuum surge chamber within a
prosthetic device vacuum system.
The Examiner finds that Haines discloses a prosthetic device vacuum
system that meets all the claim requirements except for the vacuum surge
chamber (Ans. 2–3; FF1–4). The Examiner relies upon Segerstad to assert
that “[f]or solving the same problem as addressed by Appellant (i.e.,
prevention of frequent on and off switching of the vacuum pump-which
subsequently/inherently preserves battery life) (see Segerstad: col. 2, lines 6-
7), Segerstad teaches a vacuum surge chamber (3)” (Ans. 3; FF8). The
Examiner concludes that
It would have been obvious to one of ordinary skill in the art at
the time of the invention to use a vacuum surge chamber (for
example, within element 3) as taught by Segerstad in the
invention of Haines such that the vacuum surge chamber is
secured between the foot portion and the heel portion of the
prosthetic device of Haines or operatively connected with a
pipe in the invention of Haines, the vacuum surge chamber
being operatively connected to the prosthetic socket and to the
vacuum pump assembly and maintained by the vacuum pump
assembly of Haines at a negative pressure, in order to
compensate for regulation at rapid pressure variations . . . and
thus conserve battery life for the prosthesis

(Ans. 3–4).
We conclude that a prima facie case of obviousness has not been
established based on the cited teachings of Segerstad and the rationale
supplied by the Examiner. We have considered the Examiner’s response to
Appellants’ arguments, but find that Appellants have the better position. In
particular, Appellants argue that “[t]he vacuum regulator of Segerstad is not
the equivalent of the claimed concealable vacuum surge chamber;” that
Appeal 2013-003288
Application 12/286,474

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“[t]he Segerstad regulator has numerous openings (e.g., channel 8, opening
11, channel 21, leak opening 15) which defeat any possible use of the
regulator as a surge chamber at the volume required;” and that “[t]he
numerous valve controls (e.g., screw 7, screw 22, screw 19) and manometer
6 would make concealing the Segerstad regulator impractical” (App. Br. 6).
In our view, the Examiner has not adequately explained why chamber
3 in the vacuum regulator of Segerstad would be considered by the skilled
artisan to be a “vacuum surge chamber” that could be used in a vacuum
system for maintaining a negative pressure in a cavity between a socket of a
prosthetic device and a residual limb. The Examiner’s only support for that
position is the statement that “[t]he bellows 20 serves to damp the process of
regulation at rapid pressure variations” (FF8). However, we find nothing in
the Specification to indicate that the function or purpose of the claimed
vacuum surge chamber is to regulate at rapid pressure variations. Rather,
the Specification indicates that the “surge chamber allows the vacuum
pressure between the residual limb and the prosthetic device to be sustained
for longer periods of time, thus reducing substantially the drain on the
battery source [and providing longer periods of time between pumping]”
(Spec. 3:12–14). The Specification also indicates that “[o]ne of the purposes
of the surge chamber is to prevent the frequent on-off of the pump and to
maintain a good vacuum for tight attachment of the prosthesis” (id. at 9:13–
15). There is nothing of record to suggest that Segerstad’s mechanical
vacuum regulator could achieve these capabilities with the electronic
vacuum pump taught by Haines.
Furthermore, the Specification indicates that “[a] very small leak
without a surge chamber is a large loss of vacuum in the cavity, whereas, a
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10
comparable small leak with a surge chamber will not result in a significant
loss of vacuum” (id. at 9:15–17). Thus, it appears that the claimed vacuum
surge chamber is intended to minimize the loss of vacuum caused by leaks.
By contrast, the design of Segerstad’s vacuum regulator purposefully
includes “leak opening[s]” and “leak channel[s],” and further indicates that
the bellows 20 “communicates at the bottom with the surrounding
atmosphere” (FF5–7). As noted by Appellants, “the use of the Segerstad
regulator would introduce leaks and arguably place greater demand on the
battery of the vacuum pump” (App. Br. 10). The Examiner does not address
this issue. Accordingly, we find that the Examiner has presented no reason
to use the Segerstad regulator as a vacuum surge chamber that minimizes the
loss of vacuum caused by leaks.
We thus reverse the obviousness rejection of claims 1–5, 7–11, and
16–19. The Examiner rejected claim 6 based on the further teachings of
Dean. The Examiner does not cite to any teaching in Dean that would make
up for the deficiency with respect to the Segerstad reference discussed
above. As such, we also reverse the obviousness rejection of claim 6.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
We summarily affirm the provisional obviousness-type double
patenting rejection.
We summarily affirm the rejection of claims 16 and 18 under
35 U.S.C. § 112 ¶ 4.

Appeal 2013-003288
Application 12/286,474

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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).

AFFIRMED

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