Ex parte Danby et al.

Board of Patent Appeals and Interferences

Jul 7, 2000

08314345 (B.P.A.I. Jul. 7, 2000)

Application filed September 28, 1994 for the reissue of1
U.S. Patent No. 5,151,019, granted on September 29, 1992,
based on Application 07/430,851, filed November 2, 1989.
1
The opinion in support of the decision being entered today is
not binding precedent of the Board.
Paper No. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HAL C. DANBY
and ERIC A. FAULKNER
_____________
Appeal No. 1998-2911
Application 08/314,3451
______________
HEARD: April 6, 2000
_______________
Before COHEN, FRANKFORT, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Hal C. Danby et al. appeal from the final rejection of
claims 35 and 36. Claims 1 through 34, the only other claims
pending in the application, stand allowed.
Appeal No. 1998-2911
Application 08/314,345
2
THE INVENTION
The invention relates to a pumping device for supplying
intravenous fluids to a medical patient. In general, the
device includes means for accommodating a length of tubing,
means for deforming the tubing to reduce its volume and valve
means adjacent opposed sides of the deforming means for
restricting the flow of liquid through the tubing. A copy of
claims 35 and 36 appears in the appendix to the appellants’
main brief (Paper No. 20).
THE REJECTION
Claims 35 and 36 stand rejected under 35 U.S.C. § 251 as
attempting to improperly recapture subject matter surrendered
to obtain the patent sought to be reissued.
Reference is made to the appellants’ main and reply
briefs (Paper Nos. 20 and 24) and to the examiner’s answer
(Paper No.
Appeal No. 1998-2911
Application 08/314,345
Although the statement of rejection in the examiner’s2
answer refers to “the equitable doctrine of recapture,” the
accompanying explanation indicates that the rejection is
actually based on the provisions of 35 U.S.C. § 251. This is
in accord with the prevailing view that the prohibition
against the improper recapture of surrendered subject matter
via reissue has statutory underpinnings. See, for example,
Hester Industries Inc. v. Stein Inc., 142 F.3d 1472, 46 USPQ2d
1641 (Fed. Cir. 1998) and MPEP § 1412.02.
Allowed reissue claim 1 is identical to patent claim 1. 3
Allowed reissue claim 2 is identical to patent claim 2 except
for the inclusion of a phrase (not at issue here) which was
inadvertently omitted from the patent due to a printing error.
3
21) for the respective positions of the appellants and the
examiner with regard to the merits of this rejection.2
DISCUSSION
Reissue claims 35 and 36 are broadened versions of claims
1 and 2 in U.S. Patent No. 5,151,019. The record in U.S.3
Patent No. 5,151,019 shows the following with respect to the
prosecution of claims 1 and 2.
A. On February 4, 1992, the examiner entered a final
rejection (Paper No. 16) wherein claims 1 and 2
were rejected under 35 U.S.C. § 103 as being
Appeal No. 1998-2911
Application 08/314,345
4
unpatentable over
Appeal No. 1998-2911
Application 08/314,345
The examiner identified the German reference elsewhere4
in the interview summary as German document 2939212 which had
been cited in an information disclosure statement filed March
10, 1992 (Paper No. 17).
5
U.S. Patent No. 4,549,860 to Yakich in view of U.S.
Patent No. 4,559,038 to Berg et al.
B. On April 7, 1992, the examiner held an interview with
one of the applicants, Mr. Danby, and his counsel,
Mr. Kuesters. The results of the interview were
recorded by the examiner in an interview summary
(Paper No. 18) which states in pertinent part
that

Claim 1 is to be amended to add that members are
arranged for controlled relative movement in
oppossed [sic, opposed] directions tranverse
[sic, transverse] to the tube. . . . Claim
language read over Yasich [sic, Yakich] and
German reference. Amendment will be entered. [4]
C. On April 8, 1992, applicants’ counsel filed a paper
(Paper No. 19) amending claims 1 and 2 to specify, inter
alia, that the deforming means of the claimed pumping
Appeal No. 1998-2911
Application 08/314,345
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device “comprises members arranged for controlled relative
movement in opposed directions in parallel planes
transverse to the direction of liquid passage within said
tubing.” In accompanying remarks, counsel stated that
Claim 1 submitted herewith differs slightly from
the wording of the proposed Claim 1 discussed
during the April 7, 1992 interview by the
recitation that the members of the deforming
means have controlled relative movement in --
parallel planes-- transverse to the direction of
fluid flow consistent with the fact that the
tubing is in fact deformed over a surface area
defined by parallel planes, not a single plane,
as otherwise suggested by the proposed claim
language discussed during the April 7, 1992
interview. Claim 2 is amended herewith to
incorporate the same changes added to Claim 1,
thereby to define more definitively the
patentably distinguishing structure of the
claimed deforming means of Applicants’ invention
[page 5].
Counsel added that
[a]s explained during the April 7, 1992
interview, none of the prior art references of
record, including the Yakich patent, teaches a
deforming means including members arranged for
controlled relative movement in opposed
directions in parallel planes transverse to the
direction of liquid passage, with the resulting
operation as recited in the amended Claims 1 and
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Application 08/314,345
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2 [pages 6 and 7].
D. On April 13, 1992, the examiner mailed a Notice of
Allowability (Paper No. 20) indicating that all of the
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Application 08/314,345
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pending claims, including amended claims 1 and 2, were
allowed.

The appellants filed the instant reissue application
within two years from the grant of the original patent
alleging that they had
claimed less than they had a right to claim in the
patent by not including claims having the scope of
claims 35 and 36 of this reissue patent application.
Claims 35 and 36 of the reissue application
correspond to claims 1 and 2 of the patent with the
exception of the description of the “deforming
means”. Claims 1 and 2 of the patent state that the
deforming means comprises members arranged for
controlled relative movement in opposed directions
in parallel planes transverse to the direction of
liquid passage within tubing. Claims 35 and 36
state that the deforming means comprises members
arranged for controlled relative movement in opposed
directions which extend transversely to the
direction of liquid passage within said tubing
[original and supplemental reissue declarations,
paragraph 4].
Thus, reissue claims 35 and 36 differ from patent claims
1 and 2 (and from allowed reissue claims 1 and 2) in that they
do not include the “in parallel planes” language inserted into
the patent claims via the amendment filed April 8, 1992 which
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Application 08/314,345
9
resulted in the issuance of the patent. In rejecting claims
35 and 36, the examiner takes the position that
the “parallel planes” limitation [was] deliberately
added to claims in the application for the patent .
. . upon which the present reissue . . . is based to
overcome prior art and render those claims
patentable. “Error” within the meaning of 35 U.S.C.
§ 251 does not include deliberate decisions to
surrender specific subject matter in order to
overcome prior art. Appellant’s [sic]
representative voluntarily added the “parallel
planes” limitation to the claims in the after final
amendment of April 8, 1992 in order to over come the
prior art and define the patentable structure of the
applicants[’] invention. Therefore, the reissue
claims are an attempt to impermissibly recapture
what the applicants surrendered in the original
prosecution [answer, page 4].
The appellants, on the other hand, submit that the
prosecution history of the application which matured into the
patent clearly demonstrates that the “in parallel planes”
language absent from reissue claims 35 and 36 was not added to
patent claims 1 and 2 to overcome the prior art.
The recapture rule rooted in 35 U.S.C. § 251 prevents a
patentee from regaining through reissue subject matter
surrendered in an effort to obtain allowance of original
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Application 08/314,345
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claims. In re Clement, 131 F.3d 1464, 1468-69, 45 USPQ2d
1161, 1164 (Fed. Cir. 1997). The first step in applying the
recapture rule is to determine whether and in what aspect the
reissue claims are broader than the patent claims; the second
step is to determine whether the broader aspects of the
reissue claims relate to surrendered subject matter by looking
to the prosecution history for arguments and changes to the
claims made in an effort to overcome a prior art rejection.
Id.
The application of the first step to the present fact
situation is fairly simple and straightforward and is not the
subject of dispute. Reissue claims 35 and 36 are broader than
corresponding patent claims 1 and 2 in that they do not
include the “in parallel planes” language.
The controversy in this appeal involves the application
of the second step, i.e., whether the “in parallel planes”
language absent from claims 35 and 36 relates to subject
matter surrendered in an effort to overcome the prior art and
obtain allowance of patent claims 1 and 2. Based on our
Appeal No. 1998-2911
Application 08/314,345
11
review of the patent’s prosecution history, we are satisfied
that the “in parallel planes” language does not relate to
surrendered subject matter.
The interview summary in the patent record fairly
reflects an agreement between the examiner and counsel that
claim 1, and by implication claim 2, would overcome the prior
art if amended to include the limitation that the deforming
means comprises members arranged for controlled relative
movement in opposed directions transverse to the direction of
liquid passage within the tubing. The interview summary makes
no mention of the additional “in parallel planes” limitation.
The appellants subsequently added both limitations to claims 1
and 2 with the explanation that the “in parallel planes”
limitation was consistent with the fact that the tubing is
deformed over a surface area defined by parallel planes rather
than a single plane. This is the only specific reason
expressed in the prosecution history of the patent as to why
the “in parallel planes” limitation was added to claims 1 and
2. There is nothing in the appellants' explanation or in any
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Application 08/314,345
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other part of the prosecution history which indicates that
either the examiner or the appellants considered the “in
parallel planes” limitation necessary to overcome the prior
art. To infer otherwise from the remarks accompanying the
amendment which mentioned both limitations in urging the
patentability of claims 1 and 2 over the prior art would be
unwarranted. Indeed, given the context of the “in parallel
planes” limitation within the other added limitation, it would
have been surprising had counsel not referred to both in
arguing for the allowance of the claims.
In light of the foregoing, the absence of the “in
parallel planes” language from reissue claims 35 and 36 does
not pose a recapture problem. Accordingly, we shall not
sustain the standing 35 U.S.C. § 251 rejection of these
claims.
The decision of the examiner is reversed.
REVERSED
Appeal No. 1998-2911
Application 08/314,345
13
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
APPEALS
Administrative Patent Judge ) AND
)
INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 1998-2911
Application 08/314,345
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PAUL E. SCHAAFSMA
FOLEY & LARDNER
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