Ex Parte Avganim

Board of Patent Appeals and Interferences

Jul 14, 2011

12707360 (B.P.A.I. Jul. 14, 2011)

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.
12/707,360 02/17/2010 Meir Avganim P/4222-16 2404
2352 7590 07/15/2011
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
BARRETT, SUZANNE LALE DINO
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
07/15/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MEIR AVGANIM
____________

Appeal 2011-010452
Application 12/707,360
Patent 7,549,308 B2
Technology Center 3600
____________

Before ALLEN R. MACDONALD, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/707,360
Patent 7,549,308 B2

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STATEMENT OF THE CASE
Meir Avganim (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claim 11 in reissue application 12/707,360
(“the ‘360 application”). The Examiner rejected claim 11 under 35 U.S.C.
§ 251 as being an improper recapture of broadened claimed subject matter
surrendered in the application for the patent upon which the present reissue
is based. This reissue application seeks to reissue U.S. Patent 7,549,308 B2
(“the ‘308 patent”), issued June 23, 2009, based on Application 11/650,372
(“the ‘372 application”), filed January 5, 2007. Claims 1-6 and 10 are
allowable and claims 7-9 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant’s claimed invention relates to computer anti-theft devices.
‘308 patent, col. 1, ll. 7-8. Claim 11, which is the sole claim on appeal, is
reproduced below.
11. In combination, an anti-theft locking device and a
separately provided cable locking yoke-member, wherein the
anti-theft locking device is configured to lock a computer
device and the yoke member is configured to lock a cable of an
accessory device associated with the computer device,
comprising:
wherein the anti-theft locking device comprises a
generally cylindrical, elongated lock casing defining an
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elongate axis and a peripheral wall, and a latch mechanism
provided at one end of the lock casing for fitting into a security
slot of the computer device; and
the yoke member comprising a ring-shaped body with a
stepped shoulder sized to fit over a proximal end of the lock
casing portion and a rim of the ring-shaped body, and a bridge
portion comprising a first portion which extends away from the
rim of the ring-shaped body and a second portion bent relative
to the first portion and extending parallel to the axis of the lock
casing in spaced relationship thereto, and a third portion of the
bridge portion which extends toward and terminates against the
peripheral wall of the lock casing with the second portion
defining a space between the bridge portion and the lock casing
for a receiving therein said cable.

ISSUE
The Examiner found that Appellant amended the claims of the ‘372
application, which matured into the ‘308 patent, to include limitations
regarding the combination lock mechanism to overcome a prior art rejection.
Ans. 4. The Examiner’s recapture rejection is based on the fact that the
present reissue claim 11 does not now include any limitation relating to the
combination lock mechanism. Ans. 10.
Appellant admits that reissue claim 11 is broader than the patented
claims in that reissue claim 11 is missing the characterization of the locking
mechanism as being a “combination type.” Br. 4. Appellant argues that the
Examiner erred in rejecting claim 11 based on recapture because:
(1) Appellant never argued or described in the Specification that the
patentability of the claimed invention turned on the locking mechanism
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being a combination type; and (2) claim 11 is narrower in scope as compared
to the patented claims as to the limitation pertaining to the yoke member.
Br. 4-5. The issues presented by this appeal are:
Does the broader aspect of reissue claim 11 relate to surrendered
subject matter?
If so, has the surrendered subject matter crept into reissue claim 11?
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. During prosecution of the ‘372 application, the Examiner rejected
prosecution claims 1, 3, 5, 8, and 9 under 35 U.S.C. § 102(b) as
being anticipated by Syu (US 6,763,688 B1; issued July 20, 2004),
and objected to prosecution claims 6 and 7 as being dependent
upon a rejected base claim. Office Action dated November 14,
2008, p. 2-3.
2. On November 14, 2008, prosecution claims 1, 3, and 5-9 read as
follows:
1. An anti-theft locking device of the type comprising
a lock casing connectable on the one hand to an
immovable object by a safety cable, and on the other
hand to a protected object intermediate a designated slot
formed in a side wall of the protected object, and a
locking mechanism for selectively engaging and
disengaging the lock casing to and from said side wall,
said locking device comprising:
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a separate yoke-member including a first portion
configured when the lock casing is in an engaged state to
be entrapped between the lock casing and the side wall,
and a second portion bridging over the lock casing and
forming an enclosed hollow thereunder, and when the
lock casing is in an unengaged state, said first portion is
no longer entrapped between the lock casing and the side
wall and the enclosed hollow ceases to exist when the
yoke-member is separated from the lock casing,
wherein the first portion of the yoke-member loosely
fits over a proximal portion of the lock casing.
3. The device as claimed in Claim 1 wherein yoke-
member is coupled to the lock casing in the engaged
state.
5. The device as claimed in Claim 1 wherein the
proximal portion of the lock casing is circular and the
first portion of the yoke-member is ring-shaped.
6. The device as claimed in Claim 5 wherein the
locking mechanism is a combination type.
7. The device as claimed in Claim 1 wherein the
locking mechanism is a combination type and the lock
casing comprises a latch arrangement adapted to be
coupled to a wheel member attachable to said designated
slot, said first portion of the yoke member being adapted
to be coupled to the wheel member.
8. The device as claimed in Claim 3 wherein the
yoke member is pivotally coupled to the lock casing by
the first portion thereof, the locking mechanism being a
cylinder, key-operated type, drivingly coupled to a T-
shaped tip which is adapted to be inserted into the
designated slot and rotated thereinside by less than 180º,
at least one projection being formed adapted to be
inserted into the slot simultaneously with the tip.
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9. The device as claimed in Claim 8 wherein the
insertion of the tip into the slot is effected by pushing the
cylinder by a key.
3. In response to this Office Action, the Applicant amended
prosecution claim 1 to incorporate all of the limitations of
allowable prosecution claim 7, and amended prosecution claim 5 to
rewrite it in independent form and to incorporate all of the
limitations of allowable prosecution claim 6, canceled prosecution
claims 6 and 7, and added a new dependent prosecution claim 10.
Amendment and Response to Office Action dated February 11,
2009, p. 5.
4. Amended prosecution claims 1 and 5 and new prosecution claim
10 read as follows:
1. (Currently Amended) An anti-theft locking
device of the type comprising a lock casing
connectable on the one hand to an immovable object
by a safety cable, and on the other hand to a protected
object intermediate a designated slot formed in a side
wall of the protected object, and a locking mechanism
for selectively engaging and disengaging the lock
casing to and from said side wall, said locking device
comprising:
a separate yoke-member including a first portion
configured when the lock casing is in an engaged state
to be entrapped between the lock casing and the side
wall, and a second portion bridging over the lock
casing and forming an enclosed hollow thereunder,
and when the lock casing is in an unengaged state, said
first portion is no longer entrapped between the lock
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casing and the side wall and the enclosed hollow
ceases to exist when the yoke-member is separated
from the lock casing,
wherein the first portion of the yoke-member
loosely fits over a proximal portion of the lock casing,
and
wherein the locking mechanism is a combination
type and the lock casing comprises a latch arrangement
adapted to be coupled to a wheel member attachable
to said designated slot, said first portion of the yoke
member being adapted to be coupled to the wheel
member.
5. (Currently Amended) The device as claimed
in Claim 1 An anti-theft locking device of the type
comprising a lock casing connectable on the one hand
to an immovable object by a safety cable, and on the
other hand to a protected object intermediate a
designated slot formed in a side wall of the protected
object, and a locking mechanism for selectively
engaging and disengaging the lock casing to and from
said side wall, said locking device comprising:
a separate yoke-member including a first portion
configured when the lock casing is in an engaged state
to be entrapped between the lock casing and the side
wall, and a second portion bridging over the lock
casing and forming an enclosed hollow thereunder,
and when the lock casing is in an unengaged state, said
first portion is no longer entrapped between the lock
casing and the side wall and the enclosed hollow
ceases to exist when the yoke-member is separated
from the lock casing,
wherein the first portion of the yoke-member
loosely fits over a proximal portion of the lock casing,
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wherein the proximal portion of the lock casing is
circular and the first portion of the yoke-member is
ring-shaped, and
wherein the locking mechanism is a combination
type.
10. (New) The device as claimed in Claim 5,
wherein yoke-member is coupled to the lock casing in
the engaged state.
5. In the Amendment and Response, Applicant argued:
In the Action, the Examiner indicated that Claims
6 and 7 would be allowable if rewritten in independent
form including all of the limitations of the base claim
and any intervening claims. Since Claim 1 and 5 have
been so amended, and since the remaining claims
depend from allowable Claim 1, or allowable Claim 5,
Applicant submits that the claims pending for
examination, namely claims 1, 3, 5 and 8-10, are now
in condition for allowance, which early action is
requested.
Amendment and Response to Office Action dated February 11,
2009, p. 5.
6. The Examiner then issued a notice of allowance, allowing
prosecution claims 1, 3, 5, and 8-10, which were renumbered in the
‘308 patent as patented claims 1-6. Notice of Allowance dated
April 22, 2009.
PRINCIPLES OF LAW
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
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surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment … cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993) (quoting Haliczer v. United States, 356
F.2d 541, 545 (Ct. Cl. 1966)); see also Hester Industries Inc. v. Stein, Inc.,
142 F.3d 1472, 1480 (Fed. Cir. 1998).
The Federal Circuit's opinion in Clement discusses a three-step test for
analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
element from a patent claim is broader as to that limitation's or element's
aspect. 131 F.3d at 1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. 131 F.3d at
1468-69. In this respect, review of arguments and/or amendments during the
prosecution history of the application, which matured into the patent sought
to be reissued, is appropriate. In reviewing the prosecution history, the
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Federal Circuit observed that “[d]eliberately canceling or amending a claim
in an effort to overcome a [prior art] reference strongly suggests that the
Applicant admits that the scope of the claim before cancellation or
amendment is unpatentable.” 131 F.3d at 1469. See also Hester Industries,
142 F.3d at 1481 (“an amendment to overcome a prior art rejection
evidences an admission that the claim was not patentable”).
It is clear that in determining whether “surrender” of
subject matter has occurred, the proper inquiry is whether an
objective observer viewing the prosecution history would
conclude that the purpose of the patentee's amendment or
argument was to overcome prior art and secure the patent. This
is because the recapture rule is aimed at ensuring that the public
can rely on a patentee's admission during prosecution of an
original patent.
Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006)
(citations omitted).
Step 3 of the Clement test is applied when the broadening relates to
surrendered subject matter and involves a determination whether the
surrendered subject matter has crept into the reissue application claim. Id.
Violation of the rule against recapture may be avoided under
this final step of the analysis if the reissue claims “materially
narrow” the claims relative to the original claims [(i.e., the
claims before the surrender)] such that full or substantial
recapture of the subject matter surrendered during prosecution
is avoided.
In re Mostafazadeh, No. 2010-1260, __ F.3d __, 2011 WL 1642830, at*3
(Fed. Cir. May 3, 2011) (citations omitted). “To avoid violation of the rule
against recapture in this way, the narrowing must relate to the subject matter
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surrendered during the original prosecution (i.e., the applicant cannot
recapture the full scope of what was surrendered).” Id. (citations omitted).
[A] limitation that is added during prosecution to overcome
prior art cannot be entirely eliminated on reissue because doing
so would constitute recapture of the surrendered subject matter.
The limitation may be modified, however, so long as it
continues to materially narrow the claim scope relative to the
surrendered subject matter such that the surrendered subject
matter is not entirely or substantially recaptured.
Id. at *4.
ANALYSIS
As noted supra, Appellant admits that claim 11 is broader than the
patented claims in the aspect that claim 11 does not call for the locking
mechanism to be a combination-type. Br. 4. As such, under step 1 of the
test as set forth in Clement, there is no dispute that claim 11 is broader than
the patent claims as to this aspect of the claimed locking device.
Under step 2 of the test as set forth in Clement, we determine that this
broader aspect of reissue application claim 11 relates to surrendered subject
matter. An objective observer viewing the prosecution history would
conclude that the purpose of the Applicant's amendment on February 11,
2009 was to overcome prior art and secure the patent. In particular,
Applicant made clear that he was amending the claims to add the limitations
from prosecution claims 6 and 7 indicated by the Examiner to be allowable,
i.e., that the locking mechanism is a combination-type, in order to overcome
a prior art rejection (Facts 1-6). The fact that the Applicant did not present
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arguments explicitly extoling the patentability of a combination-type locking
mechanism does not persuade us that no surrender took place by this
amendment. An objective observer viewing the prosecution history would
understand from the Examiner’s November 14, 2008 Office Action that
while the Examiner found that Syu anticipated some of the then-pending
claims, he also determined that a locking device having a combination-type
locking mechanism and a separate yoke member, as claimed, was patentable
over the art of record (Facts 1 and 2). In other words, while a combination-
type locking mechanism may have been known in the art1, the Examiner did
not reach the conclusion that it would have been obvious to modify the
locking device of Syu to have a combination-type locking mechanism, as
called for in then-pending prosecution claims 6 and 7. Applicant, by
amending his claims to incorporate this allowable subject matter and thus
secure the patent, admitted that the scope of the claims before amendment
were unpatentable, and thereby surrendered this subject matter during the
prosecution of the ‘308 patent.
Under step 3 of the test as set forth in Clement, we determine that this
surrendered subject matter has crept into reissue claim 11 because the claim
entirely eliminates the limitation as to the locking mechanism being a
combination-type, which was added during prosecution to overcome prior

1 See e.g., Office Action dated May 5, 2008, p. 3-4, in which the Examiner
found that Chang (US 6,973,809 B2, issued December 13, 2005) discloses a
locking structure for a computer wall slot employing a combination lock
instead of a key lock.
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art. See In re Mostafazadeh, at *4 (“[A] limitation that is added during
prosecution to overcome prior art cannot be entirely eliminated on reissue
because doing so would constitute recapture of the surrendered subject
matter.”). The narrowing in reissue claim 11 relates to the yoke member
(Br. 4-5) and not to the subject matter surrendered during the original
prosecution.
Accordingly, we conclude that reissue claim 11 is barred by the rule
against recapture.
CONCLUSIONS
The broader aspects of reissue claim 11 relate to surrendered subject
matter.
The surrendered subject matter has crept into reissue claim 11.
DECISION
The decision of the Examiner to reject claim 11 is AFFIRMED.

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

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