11255236 (B.P.A.I. Oct. 17, 2011)

Ex Parte Budmiger

Board of Patent Appeals and InterferencesOct 17, 2011

11255236 (B.P.A.I. Oct. 17, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/255,236 10/21/2005 Thomas Budmiger BUDM3001RE/FJD 3499 23364 7590 10/18/2011 BACON & THOMAS, PLLC 625 SLATERS LANE FOURTH FLOOR ALEXANDRIA, VA 22314-1176 EXAMINER PATEL, HARSHAD R ART UNIT PAPER NUMBER 2855 MAIL DATE DELIVERY MODE 10/18/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte THOMAS BUDMIGER _____________ Appeal 2011-012092 Reissue Application 11/255,236 U.S. Patent 6,634,238 Technology Center 2800 ______________ Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and DENISE M. POTHIER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012092 Application 11/255,236 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 32 and 34 through 45. We affirm. INVENTION The invention is directed an electromagnetic flow meter. See column 1 of Appellant’s Patent (i.e., U.S. Patent No. 6,634,238 B2). Claim 1 is representative of the invention and reproduced below: 1. A method of operating an electromagnetic flowmeter having a flow tube connected into a fluid-conveying line, said method comprising the steps of: causing the fluid to flow th[r]ough the flow tube; causing a first excitation current of predeterminable strength, said first excitation current being generated by means of a measuring and control circuit of the electromagnetic flowmeter, to flow through a first field coil mounted on the flow tube for producing a first partial magnetic field of predeterminable average strength which cuts through the fluid; causing a second excitation current of predeterminable strength, said second excitation current being generated by means of said measuring and control circuit, to flow through a second field coil mounted on the flow tube for producing a second partial magnetic field of predeterminable average strength which also cuts through the fluid; varying the strength of at least one of the excitation currents in such a manner that the average strengths of the two partial magnetic fields are at least temporarily different from each other; reversing the polarity of one of the two excitation currents in such a manner that the two partial magnetic fields are at least temporarily directed opposite to each other while having different average strengths; Appeal 2011-012092 Application 11/255,236 3 inducing a voltage in the moving fluid traversed by the two partial magnetic fields for changing potentials applied to measuring electrodes positioned at the flow tube; and picking off potentials applied to the measuring electrodes for producing a measurement signal derived from the voltage induced in the moving fluid. REJECTIONS AT ISSUE The Examiner has rejected claims 1 through 32 and 34 through 45 as being based upon a defective reissue oath and declaration under 35 U.S.C. § 251. Final Rejection 2.1 ISSUES The issue presented to us is: did the Examiner error in concluding that the reissue oath failed to state at least one specific error? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusion that the Examiner erred in finding that the reissue oath failed to state at least one specific error. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusion reached by the Examiner. 1 Throughout this opinion we refer to the Examiner’s Final Rejection dated December 17, 2009 and the Examiner’s Answer mailed on April 13, 2011. Appeal 2011-012092 Application 11/255,236 4 Specifically, the Appellant argues, that the statement “I disclosed but did not claim the subject matter now included in claims 20-45” in the reissue declaration is sufficient. Brief 5.2 Appellant reasons this is sufficient as method claim 20 is broader than claim 1 as it has four (4) steps where as method claim 1 has seven (7) steps. Brief 5. In response the Examiner cites to MPEP § 1414 and finds that the statement in the declaration fails to identify one distinguishing feature of the newly added claim over the patented claim which necessitated either broadening or narrowing the patented claim. Answer 3. Based upon this finding the Examiner concludes that the reason cited in the declaration is not sufficient enough for filing of a reissue application. Answer 3. We concur with the Examiner. We note that MPEP § 1414 (II)(C) states “[a]ny error in the claims must be identified by reference to the specific claim(s) and the specific claim language wherein lies the error.” MPEP § 1414(II)(C) also states “[a] statement of “. . . failure to include a claim directed to . . .” and then presenting a newly added claim, would not be considered [a] sufficient “error” statement because applicant has not pointed out what the other claims lacked that the newly added claim has, or vice versa. Such a statement would be no better than saying in the reissue oath or declaration that “this application is being filed to correct errors in the patent which may be noted from the change made by adding new claim 10. In both cases, the error has not been identified.” Further, we note Appellant’s argument directed to the number of method steps in claim 20 versus claim 1 is not persuasive. In as much as the argument is a statement about the differences 2 Throughout this opinion we refer to the Brief dated June 21, 2010, and the Footnote continued on next page. Appeal 2011-012092 Application 11/255,236 5 in the claims, it is not in the declaration and does not identify specific claim limitations (i.e., the errors are not readily apparent from looking at the claims as there are differences in the manner of reciting the method). Accordingly, we sustain the Examiner’s rejection of claims 1 through 32 and 34 through 45 as being based upon a defective reissue oath and declaration under 35 U.S.C. § 251. ORDER The decision of the Examiner to reject claims 1 through 32 and 34 through 45 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 tj Reissue declaration dated November 8, 2007.