Ex Parte Bieman

Board of Patent Appeals and Interferences

Sep 15, 2006

09111978 (B.P.A.I. Sep. 15, 2006)

The opinion in support of the decision being entered today is not binding precedent of the
Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte LEONARD H. BIEMAN
_______________

Appeal 2004-0659
Application 09/111,9781
Technology Center 2800
_______________

ORAL HEARING: June 27, 2006
_______________

Before GARRIS, JERRY SMITH, RUGGIERO, GROSS, and MacDONALD,
Administrative Patent Judges.2

PER CURIAM

DECISION ON APPEAL UNDER 35 U.S.C. § 134
AFFIRMED
A. INTRODUCTION
1. This is in response to Appellant’s Request for Rehearing3 of a
Decision on Appeal (the decision) of the Board of Patent Appeals and Interferences (the

1 Application filed July 8, 1998, seeking to reissue U.S. Patent 5,646,733, issued July 8,
1997, based on application 08/593,095, filed January 29, 1996. The real party in interest
is PPT Vision, Inc., Amended Appeal Brief (filed March 17, 2003), page 4.
2 Administrative Patent Judges Jerry Smith, Ruggiero, and Gross originally heard the
appeal and entered a decision on March 31, 2005. Subsequent to Appellant’s Request for
Rehearing (the request) filed May 31, 2005, the panel was expanded to include
Administrative Patent Judges Garris and MacDonald. Appellant was offered, and
accepted, an opportunity for additional oral argument.
Appeal No. 2004-0659
Application No. 09/111,978

- 2 -
Board) mailed March 31, 2005, wherein the Board affirmed the Examiner’s rejections of
claims 30 through 85.
2. The reissue application on appeal seeks to reissue U.S. Patent
5,646,733, issued July 8, 1997, based on application 08/593,095, filed January 29, 1996.
3. The reissue application contains claims 1 through 85.
4. Claims 30 through 85 have been rejected under 35 U.S.C. § 251 on
the grounds that these claims seek to recapture subject matter surrendered when the
patent sought to be reissued was granted.
5. Appellant filed an Appeal Brief on May 6, 2002, and an Amended
Appeal Brief (hereafter, the Brief) on March 17, 2003, fully replacing the earlier filed
Appeal Brief.
6. Claims 30 through 85, reproduced in Appendix B (the claim
appendix) of the Brief, are the claims on appeal before the Board of Patent Appeals and
Interferences (hereafter, the Board).
7. On March 31, 2005, the Board mailed a Decision on Appeal
(hereafter, the Decision), affirming the examiner’s rejection of claims 30 through 85.
8. Appellant filed a Request for Rehearing of the Decision on May
31, 2005.
9. The panel was expanded to a five judge panel.
10. Appellant was offered and accepted an opportunity for a new oral
argument before the expanded panel.
11. In view of the second oral hearing and the modification of the
original decision by the addition of opinions with new rationales presented infra, we
designate this a new decision. See 37 CFR 41.52(a).

3 Filed on May 31, 2005.
Appeal No. 2004-0659
Application No. 09/111,978

- 3 -
B. FINDINGS OF FACT
The following findings of fact are believed to be supported by a preponderance of
the evidence.

THE INVENTION
1. The invention relates to the non-invasive three-dimensional
measurement of surface contours using technology such as moiré technology with a novel
approach that allows continuous scanning of a surface (U.S. Patent 5,646,733, at Col. 3,
lines 24-27).
2. The invention can be understood by reference to Figures 1 and 2 of
the drawings, which are reproduced in Appendix 1 of this opinion.
3. FIG. 1 is a schematic view of a machine vision system 10
including an optical head 12 for carrying out the method and system of the present
invention (Col. 2, lines 65-67).
4. FIG. 2 is a schematic view illustrating the details of a first
embodiment of the optical head 12 of FIG. 1 (Col. 3, lines 1-2).
5. The system 10 provides high speed, scanning phase measuring of
an object 14 at a vision station 16 to develop dimensional information such as height
information of a surface 18 of the object 14 (Col. 3, lines 17-21).
6. The object 14 moves relative to the optical head 12 as indicated by
arrow 20 (Col. 3, lines 21-23).
7. The system 10 also includes a system bus 26, which receives
information from an image digitizer/frame grabber 22 and passes the information on to an
IBM compatible host computer such as a Pentium PC 28 (Col. 3, lines 40-43).
8. The frame grabber 22 places each input image into a frame buffer
having picture elements (Col. 3, lines 36-37).
9. Each of the picture elements may consist of an 8-bit number
representing the brightness of that spot in the image (Col. 3, lines 37-39).
Appeal No. 2004-0659
Application No. 09/111,978

- 4 -
10. A monitor 34 is also provided to display images (Col. 4, line 9).
11. The system 10 may include input/output circuits 30 to allow the
system 10 to communicate with one or more external peripheral devices such as a drive
31 or robots, programmable controllers, etc. having one or more stages (Col. 3, lines
44-47).
12. With reference to Fig. 1, U.S. Patent 5,464,733 states (emphasis
added):
The drive 31 provides relatively uniform and continuous movement between the
object 14 and the head 12. The I/O circuits 30 may support a three-axis stepper
board (i.e. supports multiple axis control) or other motion boards. (Col. 3, lines
48-52)
13. With reference to Fig. 2, U.S. Patent 5,464,733 states (emphasis
added):
[A] camera of the optical head 12 preferably includes a solid-state image sensor
such as a tri-linear array camera 24. For example, the camera 24 may be the
Kodak CCD chip model KLI-2103 which has 3 rows of detector or sensing
elements 25 each having 2098 CCD sensing elements per row. Each row is
physically separated by a distance equivalent to 8 pixel elements. The camera 24
was originally designed for color scanning with a red, green, and blue color mask
over each element, respectively. For the present invention, the masks are not used
but rather are removed. (Col. 3, lines 53-63)
14. Referring again to Fig. 2, U.S. Patent 5,464,733 states (emphasis
added):
[G]enerally, multiple images with different phases are obtained by moving the
surface 18 of the object 14 while keeping a pattern 36 projected by a light strip
projector 38 and the camera 24 stationary with respect to each other within the
optical head 12. The optical head 12 (i.e. when the system 10 is a scanning moiré
system) has no mechanical or optical mechanism that changes the position of the
projected pattern 36. To obtain multiple phase images, there is relative movement
between the optical head 12 and the measured surface 18. (Col. 4, lines 10-19)
Appeal No. 2004-0659
Application No. 09/111,978

- 5 -
15. Referring once again to Fig. 2, U.S. Patent 5,464,733 states
(emphasis added):
Using the tri-linear array camera 24 for scanning produces three images of the
scanned surface 18 with each image being offset by a certain number of rows.
This offset is a function of the spacing between arrays and the rate at which the
image of the surface 18 is moved past the sensing elements 25. (Col. 4, lines 33-
38)
PROSECUTION HISTORY OF THE ORIGINAL APPLICATION
16. As noted earlier, the patent sought to be reissued was based on
application 08/593,095, filed January 29, 1996 ("original application").
17. As filed, the original application contained claims 1 through 27.
Claims 1 and 14 were independent claims (reproduced below). Claims 2 through 13 and
15 through 27 depended therefrom, respectively.
18. Claim 1 as originally filed read as follows:
Claim 1 (as filed). A method for high speed, scanning phase measuring of
an object at a vision station to develop physical information associated with the object,
the method comprising the steps of:
projecting a pattern of imagable electromagnetic radiation with at least one
projector;
moving the object relative to the at least one projector at the vision station to scan
the projected pattern of electromagnetic radiation across a surface of the object to
generate an imagable electromagnetic radiation signal;
receiving the imagable electromagnetic radiation signal from the surface of the
object with a detector having a plurality of separate detector elements;
maintaining the at least one projector and the detector in fixed relation to each
other;
measuring an amount of radiant energy in the received electromagnetic radiation
signal with the detector wherein the detector elements produce images having different
phases of the same scanned surface based on the measurement; and
Appeal No. 2004-0659
Application No. 09/111,978

- 6 -
computing phase values and amplitude values for the different phases from the
multiple images.
19. Claim 14 as originally filed read as follows:
Claim 14 (as filed). A system for high speed, scanning phase measuring of an
object at a vision station to develop physical information associated with the object, the
system including:
at least one projector for projecting a pattern of imagable electromagnetic
radiation;
means for moving the object relative to the at least one projector at the vision
station to scan the projected pattern of imagable electromagnetic radiation across a
surface of the object to generate an imagable electromagnetic radiation signal;
a detector for receiving the imagable electromagnetic radiation signal from the
surface of the object and having a plurality of separate detector elements for measuring
an amount of radiant energy in the imagable electromagnetic radiation signal wherein the
detector elements produce images having different phases of the same scanned surface
based on the measurement;
means for maintaining the at least one projector and the detector in fixed relation
to each other; and
means for computing phase values and amplitude values for the different phases
from the images.
20. On August 13, 1996, the examiner entered a first Office action,
rejecting claims 1 through 27 under 35 U.S.C. § 103 as being unpatentable over the
following prior art:
(1) Kuchel, U.S. Patent 5,135,308 in view of
(2) Bullock et al. (Bullock), U.S. Patent 5,488,478.
21. Kuchel and Bullock are prior art vis-à-vis applicant under
35 U.S.C. § 102(b) and 35 U.S.C. § 102(e) respectively.
Appeal No. 2004-0659
Application No. 09/111,978

- 7 -
22. The examiner found that Kuchel describes “a method for non-
contact measuring of [an] object surface.”
23. However, the examiner found that “Kuchel does not teach the step
of moving the object relative to [a] projector.”
24. The examiner further found that Bullock shows, in the same field
of endeavor, moving the object while measuring its shape.
25. The examiner noted:
Kuchel discloses a method and apparatus for non-contact measuring of
object surface in which the gratings (G1 and G2) are moving and the measured
object is fixed. Kuchel does not teach the step of moving the object relative to the
at least one projector at the vision station to scan the projected pattern of
electromagnetic radiation across a surface of the object; however, such a feature is
known in the art, for example as taught by Bullock et al. Bullock et al, in the
same field of endeavor, discloses a method and apparatus for measuring the shape
of a surface of an object in which the steel strip 1 is moving in direction A over
support surface 2, an array of line-scan cameras (5) positioned to view and record
the light patterns and to process in parallel data representative of the recorded
light patterns to provide a measure of the shape of the object surface (figures 1-3).

26. The examiner held that:
Those of ordinary skill in the art at the time the invention was made
would have found it obvious to move the object taught by Bullock et a1 instead of
moving the grating because they would function in the same manner. A
substitution for each other is generally recognized as being within the level of
ordinary skill in the art.
27. In due course, Applicant filed an amendment responding to the
examiner's first Office action.
28. In the amendment, Applicant amended claims 1 and 14, as shown
below.
29. Claim 1 as amended read as follows ([brackets] indicate a deletion
from the claim by Applicant, underline indicates an insertion into the claim by
Applicant):
Appeal No. 2004-0659
Application No. 09/111,978

- 8 -
Claim 1 (Amended) A method for high speed, scanning phase measuring of an
object at a vision station to develop physical information associated with the object, the
method comprising the steps of:
projecting a pattern of imagable electromagnetic radiation with at least one
projector;
moving the object relative to the at least one projector at a substantially constant
velocity at the vision station so as to scan the projected pattern of electromagnetic
radiation across a surface of the object to generate an imagable electromagnetic radiation
signal;
receiving the imagable electromagnetic radiation signal from the surface of the
object with a detector having a plurality of separate detector elements which are
substantially uniformly spaced;
maintaining the at least one projector and the detector in a substantially fixed
relation to each other;
measuring an amount of radiant energy in the received electromagnetic radiation
signal with the detector wherein each of the detector elements produce [images] an image
having a different [phases] phase of the same scanned surface based on the measurement;
and
computing phase values and amplitude values for the different phases from the
multiple images.
Appeal No. 2004-0659
Application No. 09/111,978

- 9 -
30. Claim 14 as amended read as follows:
Claim 14 (Amended) A system for high speed, scanning phase measuring of an
object at a vision station to develop physical information associated with the object, the
system including:
at least one projector for projecting a pattern of imagable electromagnetic
radiation;
means for moving the object relative to the at least one projector at the vision
station at a substantially constant velocity so as to scan the projected pattern of imagable
electromagnetic radiation across a surface of the object to generate an imagable
electromagnetic radiation signal;
a detector for receiving the imagable electromagnetic radiation signal from the
surface of the object and having a plurality of separate detector elements which are
substantially uniformly spaced for measuring an amount of radiant energy in the
imagable electromagnetic radiation signal wherein each of the detector elements [produce
images] produces an image having a different [phases] phase of the same scanned surface
based on the measurement;
means for maintaining the at least one projector and the detector in a substantially
fixed relation to each other; and
means for computing phase values and amplitude values for the different phases
from the images.
31. In the amendment, Applicant included the following statement
(emphasis added):
[F]rom an examination of Bullock it is clear that Bullock discloses the use
of scanners 22 to scan laser generated light beams continuously across an
object surface in a direction generally normal to the direction of
movement of the object. This is contrary to the claimed teachings of the
present invention wherein the object is moved relative to the at least one
Appeal No. 2004-0659
Application No. 09/111,978

- 10 -
projector at the vision station so as to scan the projected pattern of
electromagnetic energy across a surface of the object to generate an
imageable electromagnetic radiation signal. In other words, only with the
present invention are multiple scans coordinated with relative motion at a
substantially constant velocity of the object to extract phase information
from substantially uniformly spaced detector elements. Also, the present
invention is limited in that the at least one projector is maintained in a
substantially fixed relation to the detector.
32. The original application was then allowed.

Appeal No. 2004-0659
Application No. 09/111,978

- 11 -
33. Consistent with Office practice, the claims were re-numbered as
follows in the course of preparing the original application for issue:
Chronological by original claim
Original claim number Claim as re-numbered
1 1
2 2
3 5
4 6
5 7
6 8
7 9
8 10
9 3
10 11
11 12
12 13
13 4
14 14
15 15
16 18
17 19
18 20
19 21
20 22
21 23
22 16
23 24
24 25
25 26
26 17
27 27

Appeal No. 2004-0659
Application No. 09/111,978

- 12 -
Chronological by patent claim
Original claim number Claim as re-numbered
1 1
2 2
9 3
13 4
3 5
4 6
5 7
6 8
7 9
8 10
10 11
11 12
12 13
14 14
15 15
22 16
26 17
16 18
17 19
18 20
19 21
20 22
21 23
23 24
24 25
25 26
27 27
34. U.S. Patent 5,646,733 issued July 8, 1997, based on the original
application and containing claims 1 through 27.

Appeal No. 2004-0659
Application No. 09/111,978

- 13 -
PROSECUTION OF REISSUE APPLICATION
35. Applicant filed reissue application 09/111,978 on July 8, 1998,
seeking to reissue U.S. Patent 5,646,733.
36. Applicant presented original patent claims 1 through 27 along with
new reissue application claims 28 through 85 for consideration.
37. New reissue application claims 28 and 29 depended from claims 1
and 14, respectively. New reissue application dependent claims 31 through 41, 43
through 55, 57 through 59, 61 through 71, and 73 through 85, depended from new reissue
application independent claims 30, 42, 56, 60, and 72, respectively.
38. Reissue application claims 15, 18, and 26 were subsequently
amended to correct minor errors.
39. Reissue application claims 1 and 14 were each subsequently
amended to add the limitation underlined in exemplary amended claim 1, reproduced
below:
Reissue Claim 1 (Amended) A method for high speed, scanning phase measuring
of an object at a vision station to develop physical information associated with the object,
the method comprising the steps of:
projecting a pattern of imagable electromagnetic radiation with at least one
projector;
moving the object relative to the at least one projector at a substantially constant
velocity at the vision station so as to scan the projected pattern of electromagnetic
radiation across a surface of the object to generate an imagable electromagnetic radiation
signal;
receiving the imagable electromagnetic radiation signal from the surface of the
object with a detector having a plurality of separate detector elements which are
substantially uniformly spaced;
maintaining the at least one projector and the pattern of imagable electromagnetic
radiation and the detector in a substantially fixed relation to each other;
Appeal No. 2004-0659
Application No. 09/111,978

- 14 -
measuring an amount of radiant energy in the received electromagnetic radiation
signal with the detector wherein each of the detector elements produce an image having a
different phase of the same scanned surface based on the measurement; and
computing phase values and amplitude values for the different phases from the
multiple images.
40. New reissue application claims 30, 42, 56, 60, and 72 were
subsequently amended to add the limitation underlined in exemplary amended claim 30,
reproduced below:
Reissue Claim 30 (Amended). A method for high-speed scanning measurement
of an object at a vision station, the vision station having a detector, in order to determine
dimensional information associated with the object, the method comprising the steps of:
projecting a pattern of light;
maintaining the projected pattern of light and the detector in a substantially fixed
relation to each other;
moving the object relative to the projected pattern of light so as to scan the
projected pattern of light across an area of a surface of the object to generate an imagable
light signal;
imaging the imagable light signal onto the detector, the detector having a first, a
second, and a third detector element, wherein the area of the surface of the object is
imaged onto the first detector element at a first phase of the projected pattern of light, the
area of the surface of the object is imaged onto the second detector element at a second
phase of the projected pattern of light and the area of the surface of the object is imaged
onto the third detector element at a third phase of the projected pattern of light;
measuring with the detector an amount of light from the area of the surface of the
object to the first detector element at the first phase, to the second detector element at the
second phase, and to the third detector element at the third phase; and
computing dimensional information based on the measuring step.
Appeal No. 2004-0659
Application No. 09/111,978

- 15 -
41. Reissue application claims 1 through 29 were indicated as
allowable by the examiner and are not involved in the appeal.
42. New reissue application claims 30 through 85, as amended, were
rejected by the examiner and are before the Board in this appeal.

EXAMINER’S REJECTION
43. The examiner rejected reissue application claims 30 through 85
under 35 U.S.C. § 251 maintaining that the claims seek to "recapture" subject matter
surrendered in obtaining allowance of claims during prosecution of the application which
matured into the patent sought to be reissued.
44. The examiner based the rejection of claims 30 through 85 on the
grounds that when faced in the original application with a rejection under 35 U.S.C.
§ 103 over the Kuchel and Bullock prior art patents, applicant made the following three
significant amendments and two significant remarks:
(1) Applicant amended application claims 1 and 14 to include
the limitation of moving the object “at a substantially constant velocity;” application
claims 1 and 14 ultimately became patent claims 1 and 14, respectively.
(2) Applicant amended application claims 1 and 14 to include
the limitation of the detector elements being “substantially uniformly spaced.”
(3) Applicant amended application claims 1 and 14 to include
the limitation of the detector and the projector being in “a substantially” fixed
relationship.
(4) Applicant remarked “only with the present invention are
multiple scans coordinated with relative motion at a substantially constant velocity of the
object to extract phase information from substantially uniformly spaced detector
elements” (underlining ours).
(5) Applicant remarked “the present invention is limited in that
the at least one projector is maintained in a substantially fixed relation to the detector.”
Appeal No. 2004-0659
Application No. 09/111,978

- 16 -

45. The examiner reasoned as follows (see Examiner’s Answer entered
July 31, 2003, pages 3-4) (Italic emphasis added)(Bold emphasis in original):
The following ground(s) of rejection are applicable to the appealed claims:
A. Claims 30-85 are rejected 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. See Hester Industries, Inc. v.
Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement,
131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir: 1997); Ball Corp. v. United States;
729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
a. Regarding claims 30, 42, 56, 60, and 72, a broadening aspect is present
in the reissue which was not present in the application for patent. The record of
the application for the patent shows that the broadening aspect (in the reissue)
relates to subject matter that applicant previously surrendered during the
prosecution of the application. Accordingly, the narrow scope of the claims in the
patent was not an error within the meaning of 35 U.S.C. 251, and the broader
scope surrendered in the application for the patent cannot be recaptured by the
filing of the present reissue application.
In the original application (08/593,095), applicants’ amendment filed on
11/18/96 inserted the limitations “at a substantially constant velocity”, “which
are substantially uniformly spaced”, and “maintaining the at least one projector
and the detector in a substantially fixed relation to each other” into claims 1 and
14 to overcome the rejection. In the remarks, applicant stated that these
limitations are distinct from the prior art. However, in the present reissue
application, these limitations are omitted in the new independent claims 30, 42,
56, 60, and 72. Thus, these claims constitute improper recapture of broadened
claimed subject matter surrendered in the application for the patent upon which
the present reissue is based even though it may be narrower in other respects.
b. Claims 31-41, 43-55, 57-59, 61-71 and 73-85 are dependent claims;
therefore, inherit the deficiencies of the claims on which they depend.
46. The examiner entered a final rejection of claims 30 through 85 on
June 22, 2001.
47. The record supports the Examiner’s findings with respect to what
limitations do not appear in reissue application claims 30 through 85, which were present
in claims 1 and 14 of the original application, as amended.

Appeal No. 2004-0659
Application No. 09/111,978

- 17 -
THE ORIGINAL APPEAL
48. Appellant filed an Appeal Brief on May 6, 2002, and an Amended
Appeal Brief (the Brief) on March 17, 2003, fully replacing the earlier filed Appeal
Brief.
49. Claims 30 through 85 of Appendix B of the Brief are the claims on
appeal before the Board.
50. The Examiner mailed an Examiner’s Answer (hereafter, the
Answer) on July 31, 2003.
51. Appellant filed a Brief in Reply (hereafter, the Reply) and Request
for Oral Hearing on October 8, 2003.
52. On October 28, 2003, the examiner notified Appellant that the
Reply had been entered into the record and the appeal forwarded to the Board for
decision.
53. An oral hearing before the Board was held on December 8, 2004.
54. On March 31, 2005, the Board mailed a Decision on Appeal
(hereafter, the Decision), affirming the examiner’s rejection of claims 30 through 85.
55. On May 31, 2005, Appellant filed a Request for Rehearing of the
Decision.
56. The panel was expanded and a second oral hearing before the
Board was held by telephone on June 27, 2006.

C. DECISION ON APPEAL UNDER 35 U.S.C. § 134
The examiner has rejected claims 30 through 85 of the reissue application on
appeal as being unpatentable under 35 U.S.C. 251 based on recapture. With respect to
claims 30 through 85, this panel unanimously affirms the decision of the examiner.
An opinion authored by Judge Gross, joined by Judge Ruggiero, a concurring
opinion authored by Judge MacDonald, joined by Judge Jerry Smith, a concurring
opinion authored by Judge Garris, and Appendix 1 follow.
Appeal No. 2004-0659
Application No. 09/111,978

- 18 -

D. OPTIONS FOR FURTHER PROCEEDINGS
1. We recognize that our opinion (1) might be viewed as discussing
points not previously brought out in the record and (2) citing Federal Circuit opinions
based on Federal Circuit decisions entered after appellant filed the appeal and that our
original decision has been sufficiently modified on rehearing so as to become, in effect, a
new decision. We thereby designate this as a new decision.
2. We also recognize that the appeal involves a reissue application
which has been pending for some time. Cf. Pritchard v. Loughlin, 361 F.2d 483, 487,
149 USPQ 841, 844 (CCPA 1966) (proceedings involving reissue should be handled
expeditiously inasmuch as term of reissue patent is running).
3. Accordingly, in an attempt to minimize any prejudice to appellant,
we exercise our discretion by authorizing applicant to proceed under any one of the
following options, the choice of the option being up to appellant.
(1) Option 1: Appellant can accept our decision as final, in
which case the appeal would be concluded.
(2) Option 2: Within two (2) months of the date of this
decision, appellant may file a request for rehearing. 37 CFR § 41.52(a)(1) (2005).
(3) Option 3: Appellant may treat our decision as a final
decision and seek judicial review within the time set out in 37 CFR § 1.304(a)(1) (2005).
4. The decision of the examiner rejecting claims 30 through 85
under 35 U.S.C. § 251 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)(1)(iv).
AFFIRMED

Appeal No. 2004-0659
Application No. 09/111,978

- 19 -
JUDGE GROSS, with whom Judge Ruggiero joins.
PERTINENT CASE LAW
In Ball Corp. v. United States, 729 F.2d 1429, 221 USPQ 289 (Fed. Cir. 1984),
the Federal Circuit stated that "[t]he recapture rule bars the patentee from acquiring,
through reissue, claims that are of the same or of broader scope than those claims that
were canceled from the original application." Id. at 1436, 221 USPQ at 295. We note
that the language used by the Federal Circuit did not limit the bar to "only" those claims
that were canceled from the original application. The Federal Circuit continued that "the
patentee is free to acquire, through reissue, claims that are narrower in scope than the
canceled claims," but recognized that "[t]he subject matter of the claims is not alone
controlling." Id. In other words, merely being narrower in scope than the canceled
claims may not be sufficient to overcome the recapture bar. In fact, in analyzing the facts
in Ball, the Federal Circuit held that the reissue claims were narrower in scope than the
canceled claims with respect to the same limitation relied upon to overcome a prior art
rejection made in the prosecution of the original application. Thus, although not
explicitly stated in Ball, there is a suggestion from the analysis therein that the narrowing
to overcome the recapture bar should relate to the same limitation relied upon to
overcome the prior art rejection.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992, 27 USPQ2d 1521 (Fed. Cir. 1993),
affirmed the suggestion that surrendered subject matter equates to that which does not
include the limitation added to overcome a prior art rejection. Specifically, the Federal
Circuit stated, "Coloplast correctly argues that reissue claim 6, which does not include the
adhesive transfer limitation [which was added and argued to overcome the prior art
rejection], impermissibly recaptures what Mentor deliberately surrendered in the original
prosecution." Id. at 996, 27 USPQ2d at 1525. The Federal Circuit then determined
whether a narrowing of the claims had occurred that was "material in relation to the
Appeal No. 2004-0659
Application No. 09/111,978

- 20 -
impermissible broadening," Id. at 996, 27 USPQ2d at 1526, or, rather, in relation to the
omission of the limitation added for patentability.
In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997), relying heavily
on the analysis in Ball and Mentor, developed a three step test for determining whether
the claims of a reissue application recapture surrendered subject matter. The first step is
"to determine whether and in what 'aspect' the reissue claims are broader than the patent
claims." Clement at 1468, 45 USPQ2d at 1164. The Federal Circuit looked at the
individual limitations that have been broadened, stating that "a reissue claim that deletes
a limitation or element from the patent claims is broader in that limitation's aspect." Id.
The second step of the test is "to determine whether the broader aspects of the reissue
claims relate to surrendered subject matter." Id. at 1468-69, 45 USPQ2d at 1164. The
Federal Circuit looked to the prosecution history, focusing on arguments and
amendments made to overcome prior art rejections, stating that "[d]eliberately canceling
or amending a claim in an effort to overcome a reference strongly suggests that the
applicant admits that the scope of the claim before cancellation or amendment is
unpatentable." Id. at 1469, 45 USPQ2d at 1164. Thus, the scope of the claim prior to
cancellation or amendment is generally considered to be surrendered subject matter. In
fact, in setting up the third step, the Federal Circuit refers to the applicant as having
"surrendered the subject matter of the canceled or amended claim,8 . . . ." Id. However,
later in the decision, in analyzing the facts of the case, the Federal Circuit determined that
eliminating limitations that had been added to overcome prior art rejections rendered the
reissue claims broader "in a manner directly pertinent to the subject matter that Clement
surrendered throughout the prosecution." Id. at 1471, 45 USPQ2d at 1166. In other

8 We note that the term "amended" generally refers to a claim after an
amendment has been entered. Thus, "canceled or amended" could refer to the claim prior
to or subsequent to amendment. As the amended claim would equate to the patented
claim, thereby rendering the patented claim surrendered, the normal reading of the term
"amended" would seem to be inappropriate. Thus, we will focus on the "canceled claim,"
recognizing that the phrase "canceled or amended" includes something more.
Appeal No. 2004-0659
Application No. 09/111,978

- 21 -
words, the Federal Circuit appears to include as "surrendered subject matter" more than
merely the canceled claims; the phrase also encompasses something pertaining to the
limitation added in the original prosecution to overcome a prior art rejection.
If the broadening is found to relate to surrendered subject matter, the third and
final step of the test is to "determine whether the surrendered subject matter has crept into
the reissue claim." Id. at 1469, 45 USPQ2d at 1164. In other words, viewing surrendered
subject matter as including more than merely the finally rejected claim, the third step is to
determine whether the claims have been narrowed in the same aspects, or with respect to
the same limitations, that prompted a finding of surrendered subject matter.
By analyzing the reasoning in Mentor and Ball, the Federal Circuit arrived at the
following principles as an approach to the third step:
(1) if the reissue claim is as broad as or broader than the
canceled or amended claim in all aspects, the recapture rule
bars the claim; (2) if it is narrower in all aspects, the
recapture rule does not apply, but other rejections are
possible; (3) if the reissue claim is broader in some aspects,
but narrower in others, then: (a) if the reissue claim is as
broad as or broader in an aspect germane to a prior art
rejection, but narrower in another aspect completely
unrelated to the rejection, the recapture rule bars the claim;
(b) if the reissue claim is narrower in an aspect germane to
a prior art rejection, and broader in an aspect unrelated to
the rejection, the recapture rule does not bar the claim, but
other rejections are possible.

Clement at 1470, 45 USPQ2d at 1165. The third step of the test in Clement compares the
reissue claims to the canceled claims, i.e., the claims of the patented application (upon
which the reissue is based) prior to the amendment that resulted in the patent. We note
that the test uses the phrase "canceled or amended," which as indicated supra, we assume
includes something more than the canceled claim. Again we will focus on the "canceled"
claim only, as the alternative language appears to be cumulative in our interpretation of
the test.
Appeal No. 2004-0659
Application No. 09/111,978

- 22 -
According to the principles set forth by the Federal Circuit, if the reissue claims
are as broad in all aspects as the claims prior to the amendment, then the recapture rule
bars the claims. As stated supra, the addition of a limitation to overcome a prior art
rejection suggests an admission that the scope of the claim prior to the amendment is
unpatentable. Therefore, if all limitations of the reissue claim are at least as broad as the
claim prior to the amendment, then the recapture rule bars the claim. Additionally, if the
reissue claim is at least as broad in an aspect related to a prior art rejection (i.e., the
limitation added to overcome the reference), even if narrower in an aspect unrelated to
the prior art rejection, then the recapture rule bars the claims. In other words, completely
eliminating a limitation added to overcome a prior art rejection, even if accompanied by a
narrowing in another area, is barred by the recapture rule.
However, if the reissue claims are narrower in all aspects (including the limitation
added to overcome the reference) or in an aspect related to a prior art rejection (i.e., with
regard to the limitation added to overcome the reference), even if broader in other areas,
then the recapture rule does not apply. Thus, a narrowing of the claim in the area of the
limitation that overcame the prior art rejection, regardless of the scope of the remaining
limitations, avoids a bar by the recapture rule. To summarize, a limitation added to
overcome a prior art rejection cannot be eliminated completely in a reissue claim unless it
is offset by a corresponding narrowing in the same area.
In Hester Industries Inc. v. Stein Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed.
Cir.), cert. denied, 525 U.S. 947 (1998), the patentee eliminated completely, in a reissue
application, two limitations of the original claims that were argued as distinguishing the
claims over the prior art. The Federal Circuit analyzed the prosecution history of the
original patent and determined that Williams, the inventor of Hester's patent, had argued
that "each of these limitations was 'critical' with regard to patentability," that those
arguments "constitute[d] an admission by Williams that these limitations were necessary
to overcome the prior art," and that "Williams, through his admission . . . surrendered
claim scope that does not include these limitations." Id. at 1482, 46 USPQ2d at 1649.
Appeal No. 2004-0659
Application No. 09/111,978

- 23 -
The Federal Circuit stated, "We share the district court's discomfort with Williams'
attempt to remove, through reissue, the 'solely with steam' and 'two sources of steam'
limitations after having relied so heavily on those limitations to obtain allowance of the
original patent claims over the prior art," referencing the recapture rule discussed in
Clement at 1468, 45 USPQ2d at 1164. Hester at 1480, 46 USPQ2d at 1647.
After determining that the reissue claims in Hester did include surrendered
subject matter, the Federal Circuit recognized that "the recapture rule may be avoided in
some circumstances." Id. at 1482, 46 USPQ2d at 1649. Therefore, the Federal Circuit
continued its analysis by determining "whether the reissue claims were materially
narrowed in other respects. See, e.g., Mentor, 998 F.2d at 996, 27 USPQ2d at 1525
('Reissue claims that are broader in certain respects and narrower in others9 may avoid the
effect of the recapture rule.'); Clement, 131 F.3d at 1470, 45 USPQ2d at 1165." Hester at
1482, 46 USPQ2d at 1649. The Federal Circuit found that the alleged narrowing aspects
were not overlooked during the prosecution of the original patent and, therefore, that the
case was not one "which involve[d] the addition of material limitations that overcome the
recapture rule." Id. at 1483, 46 USPQ2d at 1650.
Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir.
2001) revisited reissue recapture. In an application for patent, Pannu argued a distinction
of "a continuous substantially circular arc having a diameter greater than the diameter of
the lens body . . . which significantly enhance the easy insertibility of applicant's lens and
significantly reduce any possibility of snagging delicate eye tissue" over the prior art. In
the ensuing reissue application, Pannu eliminated that limitation from the claims, but

9 Although the Federal Circuit referred to other respects in this quote from
Mentor, later in its opinion the Federal Circuit indicated that the other respects must
relate to the limitation that was broadened. Mentor at 996, 27 USPQ2d at 1525. Further,
the Federal Circuit in Clement indicated in step three of the test that they too interpreted
other respects as relating to the limitation that was broadened. See step 3(a) of the
Clement test. Clement at 1470, 45 USPQ2d at 1166.
Appeal No. 2004-0659
Application No. 09/111,978

- 24 -
further limited the size and position of the snag resistant means. The Federal Circuit
stated:
The addition of the 'continuous, substantially circular arc' limitation . . .
and the statements made by Pannu to the examiner during prosecution of
the '855 patent limited the claim to exclude an interpretation that did not
include a continuous, substantially circular arc. See Southwall Techs., Inc.
v. Cardinal IG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1676 (1995).
The shape of the haptics was broadened during reissue and was the same
subject matter that was surrendered during prosecution.

Pannu at 1371, 59 USPQ2d at 1600.
As to the narrowing aspects of the reissue claims, the Federal Circuit held that
since the narrowing was related to the positioning and dimensions of the snag resistant
means rather than to the shape of the haptics, "the reissued claims were not narrowed in
any material respect compared with their broadening." Id. at 1372, 59 USPQ2d at 1601.
The Federal Circuit concluded that "[i]n prosecuting the '855 patent, Pannu specifically
limited the shape of the haptics to a 'continuous, substantially circular arc.' On reissue, he
is estopped from attempting to recapture the precise limitation he added to overcome
prior art rejections." Id.
In Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003), a precedential
Board decision entered May 29, 2003, the majority opinion stated, "In our view, the
surrendered subject matter is the outer circle of Drawing 1 [the rejected claim prior to the
amendment that resulted in the claim being issued] because it is the subject matter
appellants conceded was unpatentable." Id. at 1717. The majority further stated that "in
our view" subject matter narrower than the rejected claim but broader than the patented
claim is not barred by the recapture rule. Id. However, it acknowledged that the Federal
Circuit has held that "the mere presence of narrowing limitations in the reissue claim is
not necessarily sufficient to save the reissue claim from the recapture rule." Id. at 1729.
In analyzing the facts of the case, the majority in Eggert found that the reissue
claims were broader than the patent claims in several respects including that they omitted
Appeal No. 2004-0659
Application No. 09/111,978

- 25 -
the limitation "said retaining member being generally bowl-shaped and convex toward
said magnet," which defined the shape of the retaining member and which had been
added to overcome a prior art rejection. Id. at 1731. Accordingly, it further determined
that the omission of that limitation in the reissue claims was a broadening in an aspect
germane to the prior art rejection. It also found that the finally rejected claim prior to the
amendment that resulted in the issuance of the patent was surrendered subject matter. Id.
In applying the third step of the Clement test, determining whether the
surrendered subject matter had crept back into the reissue claim, the majority opinion
looked at the new limitation of reissue claim 15 that limited the shape of the retaining
member to "substantially covering said outer surface of said magnet" and the new
limitation of reissue claim 22 that limited the shape of the retaining member to "having a
continuous outer periphery such that any two points on the periphery can be joined by a
straight line segment which does not extend outside the periphery." The majority
ascertained that the reissue claims were "narrower than the surrendered subject matter in
an aspect germane to the prior art rejection (i.e., the shape of the retaining member) and
broader only in aspects unrelated to the rejection." Eggert at 1731. It held that the facts
of the case fell into category 3(b) of the principles set forth in Clement, and, therefore,
that the claims were not barred by the recapture rule. While one can disagree with the
Eggert majority as to what is meant by "surrendered subject matter," the result in Eggert
is consistent with our reading of the case law prior to Eggert, i.e., Mentor, Clement,
Hester, and Pannu, as discussed supra.10

10 We note that although the Eggert majority repeatedly stated that it viewed the
finally rejected claim as the surrendered subject matter, the analysis of the facts focused
on whether the limitation omitted had been added in the prosecution of the original
application to overcome a prior art rejection and whether the narrowing limitations on
reissue related to the same subject matter as the limitation omitted. Thus, despite
statements in Eggert that could be considered inconsistent with our interpretation of the
relevant case law, there is no inconsistency between our interpretation and the holding in
Eggert as it applies to the particular facts.
Appeal No. 2004-0659
Application No. 09/111,978

- 26 -
The Federal Circuit was faced once again with the issue of reissue recapture in
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d
1545 (Fed. Cir. 2005). During the prosecution of an application for patent, the examiner
rejected the claims over a combination of two references, Dechenne and Jakobsen. To
overcome the rejection, the applicant limited the claims by specifying that the shape of
the inner walls was generally convex. The applicant convinced the examiner that the
shape of the base as amended defined over "both the Dechenne patent, wherein the
corresponding wall portions 3 are slightly concave . . . and the Jakobsen patent, wherein
the entire re-entrant portion is clearly concave in its entirety." Id. at 1340, 75 USPQ2d at
1549. After a patent issued on the amended claims, the applicant filed a reissue
application including claims in which the language "inner wall portions are
generally convex" was eliminated, but the language "wherein the diameter of said re-
entrant portion is in the range of 5% to 30% of the overall diameter of said side wall" was
added to some of the claims.
The Federal Circuit applied the three step test of Clement. The Federal Circuit
found that the reissue claims were "broader in scope than the originally-issued claims in
that they no longer require the 'inner walls' to be 'generally convex.'" Id. at 1350, 75
USPQ2d at 1557. Further, the broadened aspect (i.e., the broadened limitation) "relate[d]
to subject matter that was surrendered during prosecution of the original-filed claims."
Id. However, the Federal Circuit found that "the reissue claims were not narrowed with
respect to the 'inner wall' limitation, thus avoiding the recapture rule." Id. The Federal
Circuit stated, "[t]hat the reissue claims, looked at as a whole, may be of 'intermediate
scope' is irrelevant. . . . [T]he recapture rule is applied on a limitation-by-limitation basis,
and the applicant's deletion of the 'generally convex' limitation clearly broadened the
'inner wall' limitation." Id.
It is important to note that the Federal Circuit determined that the re-entrant
portion (the element further narrowed in the reissue claims) was part of the inner wall.
Thus, the limitation added in the reissue claims (regarding the re-entrant portion) did in
Appeal No. 2004-0659
Application No. 09/111,978

- 27 -
fact further limit the inner wall. Accordingly, by "'inner wall' limitation," we believe that
the Federal Circuit meant the particular limitation that was broadened (that the inner wall
was generally convex) in the reissue claims, not any limitation relating to the inner wall.
Thus, the Federal Circuit in North American Container further clarified that "narrower in
an aspect germane to a prior art rejection" in the Clement test means narrower with
respect to the specific limitation added for patentability in the original prosecution and
eliminated in the reissue claims.
In Eggert, the limitation added for patentability was "said retaining member being
generally bowl-shaped and convex toward said magnet," whereas the narrowing was
"substantially covering said outer surface of said magnet" or "having a continuous outer
periphery such that any two points on the periphery can be joined by a straight line
segment which does not extend outside the periphery." Id. at 1731. Since North
American Container was decided after Eggert, and neither narrowing limitation in Eggert
further limited the specific limitation added for patentability, Eggert is no longer
consistent with the rationale of the Federal Circuit. Thus, Eggert should no longer be
followed.
To summarize, to determine if there has been a recapture of surrendered subject
matter, we apply the three step analysis set forth in Clement. There is disagreement as to
whether or not the phrase "surrendered subject matter" includes more than merely the
rejected claim prior to the amendment that overcame the prior art rejection, i.e.,
something relating to the added limitation. In viewing Clement in a vacuum, even if it
could be argued that Clement would support multiple interpretations, as indicated supra,
both Mentor and cases decided since Clement suggest that the Federal Circuit did, in fact,
mean to include as surrendered subject matter any claim that lacks a limitation directed to
the specific subject matter added in the original prosecution to overcome a prior art
rejection. Thus, the proper interpretation of the applicable and binding case law is that
surrendered subject matter includes any claim that lacks a limitation directed to the
specific subject matter that was added to overcome a prior art rejection.
Appeal No. 2004-0659
Application No. 09/111,978

- 28 -

APPLICATION OF THE PERTINENT CASE LAW TO THE CLAIMS ON APPEAL
As stated in Hester, 46 USPQ2d at 1648, "[a]pplication of the recapture rule
begins with a determination of whether and in what respect the reissue claims are broader
than the original patent claims." Clearly, the claims before us are broader than the
original patent claims in that they omit the limitations "at a substantially constant
velocity" and "which are substantially uniformly spaced."
"Having determined that the reissue claims are broader in these respects, under
the recapture rule we next examine whether these broader aspects relate to surrendered
subject matter." Id. Appellant (Brief, page 11), by directing our attention to step 3(b) of
the Clement test, appears to suggest that the broader aspects do not relate to surrendered
subject matter, as step 3(b) states that the recapture rule does not bar the claim if the
reissue claim is narrower in an aspect germane to a prior art rejection, and broader in an
aspect unrelated to the rejection. Appellant explains (Reply Brief, page 4) that the
broadening in the reissue claims (i.e., the removal of the limitations "at a substantially
constant velocity" and "which are substantially uniformly spaced") is "unrelated to the
rejection . . . since those limitations do not further distinguish the claims from the prior
art, and thus are not pertinent to the original rejection." Appellant alleges (Reply Brief,
page 4) that:
It is the moving of the detector relative to the object, the
light pattern whose relationship remains fixed to the
detector elements in the present claimed invention (not so
in the prior art, in which the pattern of light moves, even of
[sic] the projector does not) that are germane to the
rejection and to the surrendered subject matter.

Thus, appellant concludes that according to Clement, the recapture rule does not bar the
claims.
The facts of the present case parallel the situation in Pannu. Like appellant in the
present case, Pannu argued that the broadening did not relate to subject matter
Appeal No. 2004-0659
Application No. 09/111,978

- 29 -
surrendered during prosecution. The Court in Pannu explained that as originally filed,
none of the claims in the application limited the shape of the haptics and that Pannu filed
an amendment defining the shape of the haptics after the examiner rejected the claims as
obvious. Similarly, none of appellant's original claims limited the movement of the
object relative to the projector to a "substantially constant velocity" nor the detector
elements to be "uniformly spaced," and appellant filed an amendment adding the above-
noted limitations after the examiner rejected the claims as obvious. Pannu argued to the
examiner that none of the applied references taught the shape recited in the amendment.
Similarly, appellant argued to the examiner that none of the applied references taught
substantial constant velocity or uniform spacing. We note that appellant contends
(Request for Rehearing, page 4) that “when his attorney added limitations during
prosecution, [appellant] did not argue that the limitations added were ‘critical’ to
patentability.” However, the argument that the limitations were not in the references
constitutes a reliance upon the limitations for patentability. The Court in Pannu
concluded that Pannu's argument that the broadening did not relate to subject matter
surrendered during prosecution was "without merit." Pannu, 59 USPQ2d at 1600. We
likewise find appellant's arguments that the broadening did not relate to the rejection, or
rather to subject matter surrendered, to be without merit.
Additionally, as explained by the Court in Hester, 46 USPQ2d at 1648, both
amendments and arguments made to overcome prior art evidence a surrender. Here,
appellant, in the amendment that resulted in issuance of the patent upon which this
reissue application is based, added the limitations "at a substantially constant velocity"
and "which are substantially uniformly spaced" and argued that they distinguished over
the prior art. Therefore, the broadening, or omission of those limitations, is very much
germane to the rejection and, thus, surrendered subject matter.
Appellant further contends (Brief, pages 10-11) that “the subject matter
surrendered during prosecution of the parent application is that of the original claims,"
not "all claims that do not have some specific limitation added by amendment."
Appeal No. 2004-0659
Application No. 09/111,978

- 30 -
Appellant (Brief, page 12) directs our attention to In re Richman, 409 F.2d 269, 276, 161
USPQ 359, 363-64 (CCPA 1969), and In re Wadsworth, 27 CCPA 735, 107 F.2d 596, 43
USPQ 460, 464 (CCPA 1939), for support of this position. Although we acknowledge
the statements made by the Court in the cases cited by appellant, we disagree that those
are the controlling case law. We note that although Hester and Pannu do not explicitly
overrule Richman and Wadsworth, they do indicate a shift in the position of the Federal
Circuit and are, therefore, controlling. Similarly, appellant (Brief, page 13) points to Ball
Corp. v. United States, 29 F.2d 1429, 1437; 221 USPQ 289, 295 (Fed. Cir. 1984), as
evidence that "[a] patentee may obtain a reissue claim that varies materially from a claim
originally surrendered even though it omits a limitation added to obtain issuance."
However, as noted supra, there is a suggestion from the analysis that there must be a
narrowing that relates to that omitted limitation. In addition, although Ex Parte Eggert,
67 USPQ2d 1716 (Bd. Pat App & Int. 2003), (not argued by appellant) would appear to
support appellant's position, Eggert differs from the present case in that the limitation
added for patentability was broadened, not deleted, in the reissue claims. Therefore, we
do not view Eggert as dispositive of the issues in the present case. Further, as noted
supra, Eggert is not consistent with the current rationale of the Federal Circuit and should
no longer be followed.
As explained supra, in the original application for patent, appellant added three
limitations to the claims and argued how each limitation differed from the prior art
applied against the claims. In other words, appellant’s statements to the contrary
(Request for Rehearing, page 4) notwithstanding, appellant argued that the added
limitations were critical to patentability. In Hester, Williams (the inventor) likewise had
argued that two limitations were critical with regard to patentability. The Court held that
those arguments "constitute[d] an admission by Williams that these limitations were
necessary to overcome the prior art," and that "Williams, through his admission . . .
surrendered claim scope that does not include these limitations." Hester, 46 USPQ2d at
Appeal No. 2004-0659
Application No. 09/111,978

- 31 -
1649. Similarly, in Pannu, where a limitation added to overcome a prior art rejection was
removed in a reissue application, The Court stated:
The addition of the 'continuous, substantially circular arc' limitation . . .
and the statements made by Pannu to the examiner during prosecution of
the '855 patent limited the claim to exclude an interpretation that did not
include a continuous, substantially circular arc. See Southwall Techs., Inc.
v. Cardinal AG Co., 54 F.3d 1570, 1576, 34 USPQ2d 1673, 1676 (1995).
The shape of the haptics was broadened during reissue and was the same
subject matter that was surrendered during prosecution.

Pannu, 59 USPQ2d at 1600. Thus, according to the recent case law, the subject matter
surrendered is any claim that does not include the limitations added during the
prosecution of the original patent application.
We note that the Court in Pannu, Hester, and North American Container
recognized that after determining what subject matter was surrendered they still needed to
consider whether the claims were materially narrowed in other respects. See Hester, 46
USPQ2d at 1649, and Pannu, 59 USPQ2d at 1601. Accordingly, having determined that
the subject matter surrendered is all claims which do not include the limitations of (1)
that the object moves relative to the projector "at a substantially constant velocity," and
(2) that the detector elements "are substantially uniformly spaced," we must consider
whether the claims have been materially narrowed. Appellant argues two limitations are
materially narrower than the patent claims.
First, appellant asserts (Brief, page 10) that the reissue claims "are substantially
narrower in a manner directly material to the rejection AND are different than those
claims surrendered in Applicant's amendment in the parent application, and distinguish
from the art overcome in the parent application." Specifically, appellant (Brief, pages 11-
12 and 15) asserts that claim 30, for example, images the same area of the object onto
first, second, and third detector elements at first, second, and third phases, respectively,
of the pattern of light. Appellant urges that this is:
Appeal No. 2004-0659
Application No. 09/111,978

- 32 -
narrower and germane to the rejection because the prior art
references kept the object and the detector in a fixed
relationship and moved the projected light, thus the same
area of the object always imaged to the same detector at
each different phase of the light as the light moved. Thus
the reissue claims distinguish over the prior art in a manner
germane to the rejection.

Second, appellant argues (Brief, pages 14-15, Reply Brief, page 3, and Request for
Rehearing, page 4) that "maintaining the projected pattern of light and the detector in a
substantially fixed relation to each other," rather than the projector and the detector,
narrows the claims in a manner germane to the original rejection, thereby distinguishing
over the situation in Pannu.
Regarding the imaging of the detector elements onto three detector elements at
first, second, and third phases, respectively, despite appellant's arguments to the contrary,
we find that this limitation does not further narrow patent claim 1. Specifically, claim 1
recited "a plurality of separate detector elements which are substantially uniformly
spaced," which implies that there are at least three detector elements (or the spacing
limitation makes no sense). Further, claim 1 recited that "each of the detector elements
produce [sic] an image having a different phase of the same scanned surface." Thus,
claim 1 included imaging the same surface onto three detector elements, each at a
different phase. Merely stating the limitation a different way does not constitute a
narrowing of the claim. Accordingly, we find no material narrowing regarding the
imaging onto the detector elements at different phases.
As to "maintaining the projected pattern of light and the detector in a substantially
fixed relation to each other," this limitation does not relate to either the velocity of the
object relative to the projector nor to the spacing of the detector elements, the two
limitations that were broadened. Similarly, the imaging limitation discussed supra does
not relate to either of the broadening limitations. Accordingly, "the reissued claims were
not narrowed in any material respect compared with their broadening." Pannu, 59
Appeal No. 2004-0659
Application No. 09/111,978

- 33 -
USPQ2d at 1601. Consequently, we find that there has been no material narrowing to
avoid the recapture rule, and, thus, the rejection should be affirmed.
AFFIRMED

)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) BOARD OF PATENT
)
)
) APPEALS AND
)
)
ANITA PELLMAN GROSS ) INTERFERENCES
Administrative Patent Judge )
)
)
)

APG/vsh

Appeal No. 2004-0659
Application No. 09/111,978

- 34 -
Judge MacDonald, with whom Judge Jerry Smith joins, concurring.

A. DISCUSSION
1. RECAPTURE PRINCIPLES
(1)
THE STATUTE

The reissue statute expressly permits a patentee to correct an error thus permitting
patentee to obtain reissue claims broader than the originally issued patent claims at any
time within two (2) years from the date the original patent issues. More particularly,
35 U.S.C. § 251, ¶¶ 1 and 4, provide in pertinent part:
Whenever any patent is, through error without any deceptive intention,
deemed wholly or partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming more or
less than he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by law,
reissue the patent for the invention disclosed in the original patent, and in
accordance with a new and amended application, for the unexpired part of
the term of the original patent.

No reissued patent shall be granted enlarging the scope of the claims of
the original patent unless applied for within two years from the grant of
the original patent.

(2)
RECAPTURE IS NOT AN ERROR
WITHIN THE MEANING OF 35 U.S.C. § 251

What has become known as the “recapture rule,” prevents a patentee from
regaining through a reissue patent subject matter that the patentee surrendered in an effort
to obtain allowance of claims in the patent sought to be reissued. In re Clement, 131 F.3d
1464, 1468, 45 USPQ2d 1161, 1164 (Fed. Cir. 1997).
Appeal No. 2004-0659
Application No. 09/111,978

- 35 -
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, 27 USPQ2d 1521, 1524 (Fed. Cir. 1993), quoting from Haliczer v.
United States, 356 F.2d 541, 545, 148 USPQ 565, 569 (Ct. Cl. 1966).4 See also Hester
Industries Inc. v. Stein, Inc., 142 F.3d 1472, 1480, 46 USPQ2d 1641, 1647 (Fed. Cir.),
cert. denied, 525 U.S. 947 (1998).
(3)
IN RE CLEMENT

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, 45 USPQ2d at 1164.
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, 45 USPQ2d
at 1164. 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 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, 45 USPQ2d at 1164.

4 Haliczer is binding precedent. See South Corp. v. United States, 690 F.2d 1368, 215
USPQ 657 (Fed. Cir. 1982) (in banc) (decisions of the former U.S. Court of Customs and
Patent Appeals and former U.S. Court of Claims decisions are binding precedent).
Appeal No. 2004-0659
Application No. 09/111,978

- 36 -
Step 3 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. The following principles were articulated by the Federal Circuit,
131 F.3d at 1470, 45 USPQ2d at 1165:
Substep (1): if the reissue claim is as broad as or broader than the
canceled or amended claim in all aspects, the recapture rule bars the claim;

Substep (2): if it is narrower in all aspects, the recapture rules
does not apply, but other rejections are possible;

Substep (3): if the reissue claim is broader in some aspects, but
narrower in others, then:
(a) if the reissue claim is as broad as or broader in an
aspect germane to a prior art rejection, but narrower in another
aspect completely unrelated to the rejection, the recapture rule bars
the claim;
(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an aspect
unrelated to the rejection, the recapture rule does not bar the claim,
but other rejections are possible.

(4)
NORTH AMERICAN CONTAINER

In North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335,
75 USPQ2d 1545 (Fed. Cir. 2005), the Federal Circuit had occasion to further address
Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been held invalid
by the U.S. District Court for the Northern District of Texas. The district court bottomed
its invalidity holding based on a violation of the recapture rule. During prosecution of an
application for patent, an examiner rejected the claims over a combination of two prior
art references: Dechenne and Jakobsen. To overcome the rejection, North American
Container limited its application claims by specifying that a shape of “inner walls” of a
base of a container was “generally convex.” North American Container convinced the
Appeal No. 2004-0659
Application No. 09/111,978

- 37 -
examiner that the shape of the base, as amended, defined over “both the Dechenne patent,
wherein the corresponding wall portions 3 are slightly concave ... and the Jakobsen
patent, wherein the entire reentrant portion is clearly concave in its entirety.” 415 F.3d at
1340, 75 USPQ2d at 1549. After a patent issued containing the amended claims, North
American Container filed a reissue application seeking reissue claims in which (1) the
language “inner wall portions are generally convex” was eliminated, but (2) the language
“wherein the diameter of said re-entrant portion is in the range of 5% to 30% of the
overall diameter of said side wall” was added. Thus, the claim sought be reissued was
broader in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the reissue
claims were broader in scope than the originally-issued claims in that they no longer
require the “inner walls” to be “generally convex.” The Federal Circuit further found that
the broadened aspect (i.e., the broadened limitation) “relate[d] to subject matter that was
surrendered during prosecution of the original-filed claims.” 415 F.3d at 1350, 75
USPQ2d at 1557. The Federal Circuit observed “the reissue claims were not narrowed
with respect to the ‘inner wall’ limitation, thus avoiding the recapture rule.” The Federal
Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of “intermediate
scope” is irrelevant. . . . [T]he recapture rule is applied on a limitation-by-
limitation basis, and ... [North American Container’s] deletion of the
“generally convex” limitation clearly broadened the “inner wall”
limitation.

Id. Thus, the Federal Circuit in North American Container further developed the
principles of Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to overcome prior
art in prosecution of the application which matured into the patent sought to be reissued
and (2) eliminated in the reissue application claims.
Appeal No. 2004-0659
Application No. 09/111,978

- 38 -
(5)
EX PARTE EGGERT

Our opinion in Ex parte Eggert, 67 USPQ2d 1716 (Bd. Pat. App. & Int. 2003),
issued as a precedential opinion, is also part of the recapture precedent applicable to
proceedings before the United States Patent & Trademark Office (USPTO). Eggert was
entered on May 29, 2003, prior to the Federal Circuit’s North American Container
decision. In Eggert, the majority stated that “[i]n our view, the surrendered subject
matter is the outer circle of Drawing 1 [the rejected claim prior to the amendment that
resulted in the claim being issued] because it is the subject matter appellants conceded
was unpatentable.” 67 USPQ2d at 1717. The majority further held that “in our view”
subject matter narrower than the rejected claim but broader than the patented claim is not
barred by the recapture rule. Id. The majority explained that if the finally rejected claim
was ABC and the patent claim was ABCDEF, there would be recapture for ABC or
anything broader than ABC, but not for claims directed to ABCX, ABCDBr, ABCEF, or
ABrBCDEF, because those claims would be narrower than the finally rejected claim
ABC. 67 USPQ2d at 1717. In its opinion, the majority recognized that the Federal
Circuit had held that “the mere presence of narrowing limitations in the reissue claim is
not necessarily sufficient to save the reissue claim from the recapture rule.” 67 USPQ at
1729.
Board of Patent Appeals and Interferences Standard Operating Procedure 2
(Revision 6) (August 10, 2005) mandates that a published precedential opinion of the
Board is binding on all judges of the Board unless the views expressed in an opinion in
support of the decision, among a number of things, are inconsistent with a decision of the
Federal Circuit. In our view, the majority view in Eggert is believed to be inconsistent
with the subsequent Federal Circuit decision in North American Container with respect to
the principles governing application of Substep (3)(a) of Clement.
The Eggert majority’s analysis is believed to be consistent with North American
Container in that the majority applied the three-step framework analysis set forth in
Appeal No. 2004-0659
Application No. 09/111,978

- 39 -
applicable Federal Circuit opinions, e.g., (1) Pannu v. Storz Instruments Inc., 258 F.3d
1366, 1370-71, 59 USPQ2d 1597, 1600 (Fed. Cir. 2001); (2) Clement, 131 F.3d at 1470,
45 USPQ2d at 1165 and (3) Hester, 142 F.3d at 148, 46 USPQ2d at 1648-49. However,
the Eggert majority also held that the surrendered subject matter was the rejected claim
only rather than the amended portion of the issued claim. 67 USPQ2d at 1717. At a
similar point in the recapture analysis, North American Container has clarified the
application of the three-step framework analysis. North American Container holds that
the “inner walls” limitation (a portion of the issued claim that was added to the rejected
claim by amendment) was “subject matter that was surrendered during prosecution of the
original-filed claims.” 415 F.3d at 1350, 75 USPQ2d at 1557.
It is believed that the Substep (3)(a) rationale of the Eggert majority (1) is not
consistent with the rationale of the Federal Circuit in North American Container and (2)
should no longer be followed or be applicable to proceedings before the USPTO.

(6)
WHAT SUBJECT MATTER IS SURRENDERED?

In a case involving Substep (3)(a) of Clement, what is the subject matter
surrendered?
Is it
(1) the subject matter of an application claim which was amended or
canceled or

(2) the subject matter of an application claim which was amended or
canceled and, on a limitation-by-limitation basis, the territory
falling between the scope of

(a) the application claim which was canceled or amended and

(b) the patent claim which was ultimately issued?

Appeal No. 2004-0659
Application No. 09/111,978

- 40 -
We believe North American Container stands for the proposition that it is (2) and not (1).
Accordingly, we hold that it is (2).
(7)
CLEMENT PRINCIPLES ARE NOT PER SE RULES
Our reading of our appellate reviewing court’s recapture opinions, as a whole,
suggests that the Clement steps should not be viewed as per se rules. For example, we
note the following in Clement, 131 F.3d at 1469, 45 USPQ2d at 1164:
Although the recapture rule does not apply in the absence of evidence that
the applicant’s amendment was “an admission that the scope of that claim
was not in fact patentable,” Seattle Box Co. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984),
“the court may draw inferences from changes in claim scope when other
reliable evidence of the patentee’s intent is not available,” Ball [Corp. v.
United States], 729 F.2d at 1436, 221 USPQ at 294. Deliberately
canceling or amending a claim in an effort to overcome a reference
strongly suggests that the applicant admits that the scope of the claim
before the cancellation or amendment is unpatentable, but it is not
dispositive because other evidence in the prosecution history may indicate
the contrary. See Mentor [Corp. v. Coloplast, Inc.], 998 F.2d at 995-96, 27
USPQ2d at 1524-25; Ball, 729 F.2d at 1438, 221 USPQ at 296; Seattle
Box Co., 731 F.2d at 826, 221 USPQ at 574 (declining to apply the
recapture rule in the absence of evidence that the applicant’s “amendment
... was in any sense an admission that the scope of [the] claim was not
patentable”); Haliczer [v. United States], 356 F.2d at 545, 148 USPQ at
569 (acquiescence in the rejection and acceptance of a patent whose
claims include the limitation added by the applicant to distinguish the
claims from the prior art shows intentional withdrawal of subject matter);
In re Willingham, 282 F.2d 353, 354, 357, 127 USPQ 211, 213, 215
(CCPA 1960) (no intent to surrender where the applicant canceled and
replaced a claim without an intervening action by the examiner).
Amending a claim “by the inclusion of an additional limitation [has]
exactly the same effect as if the claim as originally presented had been
canceled and replaced by a new claim including that limitation.” In re
Byers, 230 F.2d 451, 455, 109 USPQ 53, 55 (CCPA 1956). [Footnote and
citations to the CCPA reports omitted.]

Appeal No. 2004-0659
Application No. 09/111,978

- 41 -
(8)
ALLOCATION OF BURDEN OF PROOF
What is the proper allocation of the burden of proof in ex parte examination?
For reasons that follow, we hold that an examiner has the burden of making out a
prima facie case of recapture. The examiner can make out a prima facie case of
recapture by establishing that the claims sought to be reissued fall within Substeps (1) or
3(a) of Clement.
For reasons that follow, we also hold that once a prima facie case of recapture is
established, the burden of persuasion then shifts to the applicant to establish that the
prosecution history of the application, which matured into the patent sought to be
reissued, establishes that a surrender of subject matter did not occur.
As will become apparent, our rationale parallels practice in determining whether
subject matter is surrendered when a doctrine of equivalents analysis occurs in
infringement cases.
(9)
BURDEN OF PROOF ANALYSIS
Our analysis begins with an observation made by our appellate reviewing court in
Hester, 142 F.3d at 1481-82, 46 USPQ2d at 1649:
[A]s recognized in Ball, the recapture rule is based on principles of
equity[5] and therefore embodies the notion of estoppel. 729 F.2d at 1439,
221 USPQ at 296. Indeed, the recapture rule is quite similar to
prosecution history estoppel, which prevents the application of the
doctrine of equivalents in a manner contrary to the patent’s prosecution
history. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., [520 U.S.
17, 33] 117 S. Ct. 1040, 1051[41 USPQ2d 1865, 1873] (1997). Like the
recapture rule, prosecution history estoppel prevents a patentee from
regaining subject matter surrendered during prosecution in support of
patentability. See id.

5 The reissue statute has been characterized as being remedial in nature, based on
fundamental principles of equity and fairness and should be construed liberally. In re
Bennett, 766 F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985) (in banc); In re
Willingham, 282 F.2d 353, 354-55, 127 USPQ 211, 214 (CCPA 1960). Nevertheless,
Appeal No. 2004-0659
Application No. 09/111,978

- 42 -
Hester argues that an analogy cannot be made with prosecution
history estoppel because the reissue procedure and prosecution history
estoppel are the antithesis of one another--reissue allows an expansion of
patent rights whereas prosecution history estoppel is limiting. However,
Hester’s argument is unpersuasive. The analogy is not to the broadening
aspect of reissue. Rather, the analogy is with the recapture rule, which
restricts the permissible range of expansion through reissue just as
prosecution history estoppel restricts the permissible range of equivalents
under the doctrine of equivalents.
This court earlier concluded that prosecution history estoppel can
arise by way of unmistakable assertions made to the Patent Office in
support of patentability, just as it can arise by way of amendments to avoid
prior art. See, e.g., Texas Instruments, Inc. v. International Trade
Comm’n, 998 F.2d 1165, 1174, 26 USPQ2d 1018, 1025 (Fed. Cir. 1993).
See also Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 234 F.3d 558, 602, 56
USPQ2d 1865, 1899 (Fed. Cir. 2000) (Festo I), vacated and remanded, 535 U.S. 722,
122 S. Ct. 1831, 62 USPQ2d 1705 (2002) (Festo II)6 (Michel, J., concurring-in-part and
dissenting-in-part):
[T]he law of prosecution history estoppel has developed with equal
applicability to reissue patents and original patents whose claims were
amended during prosecution. By at least 1879, the Supreme Court
recognized that the process of obtaining a reissue patent precluded the
patentee from recapturing that which he had disclaimed (i.e., surrendered),
through the reissuance process.

fairness to the public must also be considered. As stated in Mentor, "the reissue
statement cannot be construed in such a way that competitors, properly relying on
prosecution history, become patent infringers when they do so." 998 F.2d at 996, 27
USPQ2d at 1525.
6 The “Festo” convention used in this opinion is:

Festo I is the original in banc decision of the Federal Circuit.

Festo II is the decision of the Supreme Court.

Festo III is the decision of the Federal Circuit on remand.
Appeal No. 2004-0659
Application No. 09/111,978

- 43 -
(10)
RELEVANCE OF PROSECUTION HISTORY

“Surrendered subject matter” is defined in connection with prosecution history
estoppel in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 733-34,
122 S. Ct. 1831, 1838, 62 USPQ2d 1705, 1710-11 (2002) (Festo II):
The doctrine of equivalents allows the patentee to claim those
insubstantial alterations that were not captured in drafting the original
patent claim but which could be created through trivial changes. When,
however, the patentee originally claimed the subject matter alleged to
infringe but then narrowed the claim in response to a rejection, he may not
argue that the surrendered territory comprised unforeseen subject matter
that should be deemed equivalent to the literal claims of the issued patent.
On the contrary, “[b]y the amendment [the patentee] recognized and
emphasized the difference between the two phrases[,] ... and [t]he
difference which [the patentee] thus disclaimed must be regarded as
material.” Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-37,
62 S. Ct. 513, 518-19 [52 USPQ 275, 279-80] (1942).

Festo II goes on to comment, 535 U.S. at 737-41, 122 S. Ct. at 1840-42, 62
USPQ2d at 1712-14:
[Prosecution history estoppel’s] reach requires an examination of the
subject matter surrendered by the narrowing amendment. [A] complete
bar [would avoid] this inquiry by establishing a per se rule; but that
approach is inconsistent with the purpose of applying the estoppel in the
first place to hold the inventor to the representations made during the
application process and to the inferences that may reasonably be drawn
from the amendment (emphasis added).

*
*
*
A patentee’s decision to narrow his claims through amendment may be
presumed to be a general disclaimer of the territory between the original
claim and the amended claim. Exhibit Supply, 315 U.S., at 136-137, 62 S.
Ct. 513 (“By the amendment [the patentee] recognized and emphasized
the difference between the two phrases and proclaimed his abandonment
Appeal No. 2004-0659
Application No. 09/111,978

- 44 -
of all that is embraced in that difference”). There are some cases,
however, where the amendment cannot reasonably be viewed as
surrendering a particular equivalent. The equivalent may have been
unforeseeable at the time of the application; the rationale underlying the
amendment may bear no more than a tangential relation to the equivalent
in question; or there may be some other reason suggesting that the
patentee could not reasonably be expected to have described the
insubstantial substitute in question. In those cases the patentee can
overcome the presumption that prosecution history estoppel bars a finding
of equivalence (emphasis added).
***
When the patentee has chosen to narrow a claim, courts may presume the
amended text was composed with awareness of this rule and that the
territory surrendered is not an equivalent of the territory claimed. In those
instances, however, the patentee still might rebut the presumption that
estoppel bars a claim of equivalence. The patentee must show that at the
time of the amendment one skilled in the art could not reasonably be
expected to have drafted a claim that would have literally encompassed
the alleged equivalent (emphasis added).

The same policy considerations that prevent a patentee from urging equivalents
within what the Supreme Court refers to as “surrendered territory” should prima facie
prohibit the patentee from being able to claim subject matter within the surrendered
territory in reissue. Accordingly, the “surrendered subject matter” that may not be
recaptured through reissue should be presumed to include subject matter broader than the
patent claims in a manner directly related to (1) limitations added to the claims by
amendment (either by amending an existing claim or canceling a claim and replacing it
with a new claim with that limitation) to overcome a patentability rejection and (2)
limitations argued to overcome a patentability rejection without amendment of a claim.
These presumptions are believed to place practical and workable burdens on examiners
and applicants.
Appeal No. 2004-0659
Application No. 09/111,978

- 45 -
(11)
ADMISSIBLE EVIDENCE IN REBUTTAL SHOWING

As in the case of surrender when applying the doctrine of equivalents, a reissue
applicant should have an opportunity to rebut any prima facie case made by an examiner.
What evidence may an applicant rely on to rebut any prima facie case of
recapture?
We hold that the admissible rebuttal evidence generally should be limited to
(1) the prosecution history of the application which matured into the patent sought to be
reissued and (2) showings related to what was known by a person having ordinary skill in
the art at the time an amendment was made. Nevertheless, we cannot attempt to divine,
at this time, all evidence that might be relevant. As with other issues that come before
the USPTO, such as obviousness and enablement, the evidence to be presented will vary
on a case-by-case basis, as will the analysis of that evidence.
An applicant must show that at the time the amendment was made, one skilled in
the art could not reasonably have viewed the subject matter broader than any narrowing
amendment as having been surrendered. The showing required to be made by applicant
is consistent with the public notice function of claims. Nevertheless, some limited
extrinsic evidence may be relevant. However, extrinsic evidence unavailable to one of
ordinary skill in the art at the time of the amendment is not relevant to showing that one
skilled in the art could not reasonably have viewed the subject matter as having been
surrendered. Limiting the nature of the admissible evidence is believed to be consistent
with the Federal Circuit’s decision on remand following Festo II. Festo Corp. v.
Shoketsu Kinzoku Kogyo Kabushiki Co., 344 F.3d 1359, 1367, 68 USPQ2d 1321, 1326
(Fed. Cir. 2003), cert. denied, 541 U.S. 988 (2004) (Festo III).
On remand, the Federal Circuit notes (Id. at 1367-70, 68 USPQ2d at 1326-29):
[W]e reinstate our earlier holding that a patentee’s rebuttal of the Warner-
Jenkinson presumption is restricted to the evidence in the prosecution
Appeal No. 2004-0659
Application No. 09/111,978

- 46 -
history record. Festo [I], 234 F.3d at 586 & n.6; see also Pioneer
Magnetics, 330 F.3d at 1356 (stating that only the prosecution history
record may be considered in determining whether a patentee has overcome
the Warner-Jenkinson presumption, so as not to undermine the public
notice function served by that record). If the patentee successfully
establishes that the amendment was not for a reason of patentability, then
prosecution history estoppel does not apply.

***
. . . By its very nature, objective unforeseeability depends on underlying
factual issues relating to, for example, the state of the art and the
understanding of a hypothetical person of ordinary skill in the art at the
time of the amendment. Therefore, in determining whether an alleged
equivalent would have been unforeseeable, a district court may hear expert
testimony and consider other extrinsic evidence relating to the relevant
factual inquiries.
. . . As we have held in the Warner-Jenkinson context, that reason should
be discernible from the prosecution history record, if the public notice
function of a patent and its prosecution history is to have significance. See
id. at 1356 (“Only the public record of the patent prosecution, the
prosecution history, can be a basis for [the reason for the amendment to
the claim]. Otherwise, the public notice function of the patent record
would be undermined.”); Festo [I], 234 F.3d at 586 (“In order to give due
deference to public notice considerations under the Warner-Jenkinson
framework, a patent holder seeking to establish the reason for an
amendment must base his arguments solely upon the public record of the
patent’s prosecution, i.e., the patent’s prosecution history. To hold
otherwise--that is, to allow a patent holder to rely on evidence not in the
public record to establish a reason for an amendment--would undermine
the public notice function of the patent record.”). Moreover, whether an
amendment was merely tangential to an alleged equivalent necessarily
requires focus on the context in which the amendment was made; hence
the resort to the prosecution history. Thus, whether the patentee has
established a merely tangential reason for a narrowing amendment is for
the court to determine from the prosecution history record without the
introduction of additional evidence, except, when necessary, testimony
from those skilled in the art as to the interpretation of that record.
. . . When at all possible, determination of the third rebuttal criterion
should also be limited to the prosecution history record. . . . We need not
decide now what evidence outside the prosecution history record, if any,
Appeal No. 2004-0659
Application No. 09/111,978

- 47 -
should be considered in determining if a patentee has met its burden under
this third rebuttal criterion.

We interpret Festo III to generally, perhaps effectively, limit the admissible
rebuttal evidence to the prosecution history record and extrinsic evidence related to the
knowledge of the hypothetical person of ordinary skill in the art at the time of the
amendment. Admitting evidence not available to the public, such as an affidavit of an
attorney giving mental impressions from the attorney who made the amendment, would
undermine the public notice function of the patent and its prosecution history.
(12)
NON-RELEVANCE OF “INTERVENING RIGHTS”

We have not overlooked a possibility that an argument might be made that the so-
called intervening rights provision relating to reissues makes jurisprudence on the
doctrine of equivalents presumption inapplicable to reissue recapture rules. Our answer
as to the argument is similar to the answer given by the Federal Circuit in Hester with
respect to whether the doctrine of equivalents surrender principles have any applicability
to reissue surrender principles. Hester squarely held that they do. Moreover, mixing
“intervening rights” with “surrender” is like mixing apples with oranges or putting the
cart before the horse. A patentee seeking a reissue claim which is barred by recapture is
not entitled to a reissue patent under 35 U.S.C. § 251. If there is no reissue patent, there
can be no intervening rights.
(13)
PUBLIC NOTICE

We believe that any recapture analysis must be bottomed principally on a “public
notice” analysis that can occur only after a record becomes “fixed.” In the case of a
patent, the “claims” and the “prosecution history” become fixed at the time the patent is
issued--not during “fluid” patent prosecution where claims and arguments can change
Appeal No. 2004-0659
Application No. 09/111,978

- 48 -
depending on the circumstances, e.g., prior art applied and amendments to claims. It is
from a fixed perspective that the public (not the patentee) must make an analysis of what
the patentee surrendered during prosecution. Moreover, an applicant (not the public)
controls what arguments and amendments are presented during prosecution. When an
argument or amendment is presented, it is the applicant that should be in the best position
to analyze what subject matter (i.e., territory to use the Supreme Court’s language) is
being surrendered.

2. THE EXAMINER’S PRIMA FACIE CASE
Our finding of fact 45 sets out the basis upon which the examiner made a
recapture rejection. As noted in Finding 47, the record supports the Examiner’s findings.
In the application which matured into the patent now sought to be reissued, the
examiner “rejected” originally filed claims 1-27, as noted in findings of fact 20-26.
Applicant proceeded to amend independent application claims 1 and 14. Claims 1-27
issued as renumbered patent claims 1-27 (Finding 33).
The method and system of the original claims rejected by the examiner based on
prior art did not contain certain limitations:
Limitation A: moving . . . “at a substantially constant
velocity” --found in patent claims 1 and 14, but not original
application claims 1 and 14.

Limitation B: separate detector elements “which are
substantially uniformly spaced” --found in patent claims 1
and 14, but not original application claims 1 and 14.

Limitation C: the detectors in “a substantially” fixed
relation to each other --found in patent claims 1 and 14, but
not original application claims 1 and 14.

Because limitations A, B, and C are absent from the reissue claims being rejected and
since those limitations are germane as to why the prior art did not reach claims containing
Appeal No. 2004-0659
Application No. 09/111,978

- 49 -
limitations A, B, and C, the examiner has correctly placed the claims sought to be
reissued within Substep (3)(a) of Step (3) of Clement.

As the examiner accurately notes, with respect to reissue application claims 30
through 85:
There is no question that the new [re-issue] claims are
broader than the patent claims due to the elimination of 1)
the relative movement being “at a substantially constant
velocity” and 2) the detector elements being “substantially
uniformly spaced” limitations, that are present in the
[patent] claims. [Examiner’s Answer, page 5]

The Examiner’s accurate factual analysis demonstrates that the examiner has
made out a prima facie case of recapture.

3. APPLICANT’S RESPONSE TO THE EXAMINER’S CASE
(1) ARGUMENTS OF APPEAL BRIEF FILED MARCH 17, 2003
In the Appeal Brief filed March 17, 2003, Appellant cites numerous authorities
for the proposition that he is not precluded from broadening a limitation added to a claim
in obtaining its allowance. We agree that Appellant is not precluded, so long as
Appellant shows that at the time the amendment was made, one skilled in the art could
not reasonably have viewed the subject matter broader than any narrowing amendment as
having been surrendered. As we have already fully discussed supra, Appellant is free to
rebut the presumption of surrender based on evidence generally limited to (1) the
prosecution history of the application which matured into the patent sought to be reissued
and (2) showings related to what was known by a person having ordinary skill in the art
at the time an amendment was made. Appellant has not favored us with such rebuttal
argument and evidence in the record before us.
Appeal No. 2004-0659
Application No. 09/111,978

- 50 -
Appellant also argues at page 10 of the brief, “[t]he subject matter surrendered
during prosecution of the parent application is that of the original claims.” We disagree
with such a per se rule.
An argument that only the subject matter of a rejected claim can be viewed, as
surrendered territory appears to be inconsistent with sound public policy made apparent
by binding Supreme Court and Federal Circuit precedent. Rather than applying a per se
rule, we believe that the proper inquiry requires a factual analysis on a case-by-case basis
to determine whether the patentee is attempting to recapture by reissue subject matter
surrendered during the prosecution of the patent application.
We note that at the oral hearing on June 27, 2006, appellant argued:
1) limitation A is in the prior art and thus could not reasonably be viewed as
surrendered;
2) limitation B is in the prior art and thus could not reasonably be viewed as
surrendered; and
3) limitation C is actually a broadening of the claim rather than a narrowing and
thus could not reasonably be viewed as surrendered.
However, while we view this type of argument as directly on point to the issue before us,
Appellant provided no evidence in support of the oral arguments, nor do such arguments
and supporting evidence appear in the briefs. This last point is critical as
37 C.F.R. § 41.47(e)(1) requires “at the oral hearing, appellant may only rely on evidence
that has been previously entered and considered by the primary examiner and present
argument that has been relied upon in the brief or reply brief except as permitted by
paragraph (e)(2) of this section.”
(2) ARGUMENTS OF REPLY BRIEF FILED OCTOBER 8, 2003
Appellant, at page 4 of the Reply Brief filed October 8, 2003, argues:
The aspect of the present claim that is unrelated to the
rejection are the limitations insisted to by the Examiner “at
a substantially constant velocity” and “which are
Appeal No. 2004-0659
Application No. 09/111,978

- 51 -
substantially uniformly spaced” and [projector and detector
in a] “substantially fixed relationship to one another” since
those limitations do not further distinguish the claims from
the prior art, and thus are not pertinent to the original
rejection.

We disagree. Our findings of fact 27-31 set out the amendments and statements made by
appellant in response to the Examiner’s rejection of the originally filed claims. As noted
in Finding 31, appellant specifically cited the importance of the same three limitations
now “insisted to by the Examiner.”
As with limitation A, limitation B, and limitation C, appellant does not favor us
with any showing that at the time the amendment was made, one skilled in the art could
not reasonably have viewed the subject matter broader than appellant’s statement on the
record (Finding 31) as having been surrendered.

(3) OTHER ARGUMENTS
We have considered all other arguments made by appellant in the Appeal Brief
and subsequent Briefs. None has convinced us that the Examiner erred in rejecting
reissue claims 30 through 85 based on recapture.

Appeal No. 2004-0659
Application No. 09/111,978

- 52 -
B. DECISION
Upon consideration of the record, and for the reasons given, the decision of the
examiner rejecting reissue claims 30 through 85 based on recapture is affirmed.
AFFIRMED

)
)
)
JERRY SMITH )
Administrative Patent Judge ) BOARD OF PATENT
)
)
) APPEALS AND
)
)
ALLEN R. MacDONALD ) INTERFERENCES
Administrative Patent Judge )
)
)
)

ARM/vsh
Appeal No. 2004-0659
Application No. 09/111,978

- 53 -
GARRIS, Administrative Patent Judge, concurring.

I agree with the majority’s decision to affirm the rejection of claims 30 through 85
under 35 U.S.C. § 251 based on recapture. Particularly in light of the correspondence
between the recapture pertinent facts in this appeal and those in Pannu v. Storz
Instruments, Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001), this affirmance is
appropriate as fully explained in the majority opinion.
I write separately to express my disagreement with certain statements made by the
majority which are unnecessary for resolution of this appeal and which are contrary to
binding decisional and statutory authority.
On page 27 of this decision, the majority states “the proper interpretation of the
applicable and binding case law is that surrendered subject matter includes any claim that
lacks a limitation directed to the specific subject matter that was added to overcome a
prior art rejection.” This definition of surrendered subject matter is proper under
appropriate factual circumstances such as those of the instant appeal. See Pannu, id.
However, when read in context, this statement clearly reflects the majority’s position that
it is not proper under any circumstances to define surrendered subject matter vis-à-vis the
recapture rule in terms of a claim which has been canceled or amended in order to avoid a
rejection.
This position is erroneous.
The binding precedent of our present and past reviewing courts includes
numerous decisions which define surrendered subject matter in terms of a claim that had
been canceled or amended to avoid a rejection. For example: See In re Clement, 131
F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d
1429, 221 USPQ 289 (Fed. Cir. 1984); In re Richman, 409 F.2d 269, 161 USPQ 359
(CCPA 1969); In re Byers, 230 F.2d 451, 109 USPQ 53 (CCPA 1956); In re Wadsworth,
107 F.2d 596, 43 USPQ 460 (CCPA 1939). The majority has contradicted this binding

Appeal No. 2004-0659
Application No. 09/111,978

- 54 -
precedent, and potentially the broadening provision of 35 U.S.C. § 251, in taking the
position that such a definition is no longer proper under any circumstances. Until and
unless our reviewing court holds otherwise, this definition of surrendered subject matter
should be applied under appropriate factual circumstances.
On page 33 of this decision, the majority properly determines that “there has been
no material narrowing [of the appealed reissue claims] to avoid the recapture rule.”
However, the paragraph which contains this statement suggests that the majority believes
the recapture rule may be avoided only if a material narrowing relates to the subject
matter (i.e., a limitation of the original patent claims) which was broadened.
This belief is incorrect.
It is well established that the recapture rule may be avoided by a narrowing in
aspects unrelated to the broadening aspects. See In re Clement, 131 F.3d 1464, 1469-70,
45 USPQ2d 1161, 1165 (Fed. Cir. 1997) and Mentor Corp. v. Coloplast, Inc., 998 F.2d
992, 996, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). As explained in Hester Indus., Inc. v.
Stein, Inc., 142 F.3d 1472, 1482-83, 46 USPQ2d 1641, 1649-50 (Fed. Cir. 1998):
[T]his principal, in appropriate cases, may operate to overcome the
recapture rule when the reissue claims are materially narrower in other
overlooked aspects of the invention. The purpose of this exception to the
recapture rule is to allow the patentee to obtain through reissue a scope of
protection to which he is rightfully entitled for such overlooked aspects.

Appeal No. 2004-0659
Application No. 09/111,978

- 55 -
In summary, I disagree with the above discussed positions of the majority but
concur with the decision to affirm the Section 251 rejection under review.
AFFIRMED

)
)
)
)
) BOARD OF PATENT
)
)
BRADLEY R. GARRIS ) APPEALS AND
)
)
) INTERFERENCES
)
)

BRG/vsh
Appeal No. 2004-0659
Application No. 09/111,978

- 56 -
LEMAIRE PATENT LAW FIRM, P.L.L.C.
PO BOX 11358
ST PAUL, MN 55111
Appeal No. 2004-0659
Application No. 09/111,978

- 57 -
APPENDIX 1

Brief description the drawings of Bieman, U.S. Patent 5,646,733 (drawing sheets 1-2 of
Bieman are attached as appendix pages 2-3).

Figure 1 on page 2 of this appendix is a schematic view of a machine vision system
including an optical head for carrying out the method and system of the present
invention.

Figure 2 on page 3 of this appendix is a schematic view illustrating the details of a first
embodiment of the optical head of Figure 1.

Appeal No. 2004-0659
Application No. 09/111,978

- 58 -

Appeal No. 2004-0659
Application No. 09/111,978

- 59 -