Ex Parte GoodeDownload PDFBoard of Patent Appeals and InterferencesJun 27, 201110345836 (B.P.A.I. Jun. 27, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/345,836 01/16/2003 John E. Goode 131290.1029 2092 32914 7590 06/28/2011 GARDERE WYNNE SEWELL LLP INTELLECTUAL PROPERTY SECTION 3000 THANKSGIVING TOWER 1601 ELM ST DALLAS, TX 75201-4761 EXAMINER BATES, ZAKIYA W ART UNIT PAPER NUMBER 3676 MAIL DATE DELIVERY MODE 06/28/2011 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 JOHN E. GOODE ____________________ Appeal 2011-008482 Application 10/345,836 Patent 6,173,769 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, KEN B. BARRETT, and MICHAEL C. ASTORINO, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008482 Application 10/345,836 2 STATEMENT OF CASE John E. Goode (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s rejection of claims 25-30 (all of which were added in this reissue application1) 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.” Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b); §134(a). We AFFIRM. The Invention The claims involved in the appeal are directed to a tube conveying apparatus and to a gripper for a tube conveying apparatus. Independent claims 25, 27, and 29, reproduced below, are representative of the claimed subject matter: 25. A tube conveying apparatus comprising: a frame; a pair of continuous drive chains supported on the frame and revolving in a common plane, the pair of drive chains having opposed, elongated parallel runs spaced apart to form a path for engaging tubing passing therebetween; and a plurality of grippers carried on each of the pair of drive chains, at least one of the plurality of grippers having a gripper shoe coupled to a carrier mounted on one of the pair of chains, the gripper shoe being coupled to the carrier by interlocking members including structure to prevent relative movement of the gripper shoe with respect to the carrier in directions generally parallel to the common plane but to permit relative 1 The present application is for reissue of US 6,173,769 B1, which issued January 16, 2001, from Application 09/070,593 (hereinafter “the ‘593 Application”). Appeal 2011-008482 Application 10/345,836 3 movement of the gripper shoe in a direction generally perpendicular to the common plane. 27. A gripper element, the gripper element comprising a gripper shoe having a face defining an elongated hollow with one or more surfaces for engaging a pipe or downhole tool, which one or more surfaces are symmetrical about a first plane extending along the length of the elongated hollow, the gripper element also including a coupling element configured so that the coupling element couples in a manner that (a) permits relative sliding movement of the gripper shoe along a first axis within a second plane perpendicular to the first plane in order to enable quick decoupling in the one direction, but (b) prevents any substantial relative movement in other directions. 29. A tubing gripper, comprising: a carrier having mounting specifically adapted for connection to a chain of a tube conveying apparatus and a first coupling element; a gripper shoe including a first face having one or more surfaces with which it may engage a portion of the outer circumference of tubing or a tool to be inserted into a well, and a second face having a second coupling element for interlocking with the first coupling element, the first and second coupling elements being configured (a) to permit relative movement of the gripper shoe and carrier along an axis in a plane parallel to a central axis of the tubing or tool, to enable quick assembly or release of the gripper shoe to and from the carrier along the axis, but lb) [sic: (b)] to prevent any substantial movement of the gripper shoe in directions other than along the axis. THE ISSUE The issue presented in this appeal is whether independent reissue claims 25, 27, and 29 are directed to subject matter that Appellant Appeal 2011-008482 Application 10/345,836 4 surrendered in an effort to obtain allowance of the original claims, so as to violate the rule against recapture. Appellant does not present any separate arguments directed to dependent claims 26, 28, and 30. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), the dependent claims stand or fall with the independent claim from which they depend. FACTS PERTINENT TO THE ISSUE The Prosecution History of the Patent 1. Prior to the Examiner’s first Office Action, independent claim 1of the ‘593 application recited “the shoe including a plurality of tongues for sliding, in directions generally perpendicular to the common plane, in corresponding grooves formed by the carrier for retaining the shoe on the carrier.” Independent claim 10 recited “opposing slots formed on the front side of the carrier” each having an open end and a closed end and “the shoe including a base portion having lugs for sliding into the open ends of the slots, the slots and lugs thereby cooperating to retain the shoe on the carrier.” Independent claim 16 recited a shoe, but did not recite the shoe including either tongues and grooves or lugs and slots. Claim 17, which depended from claim 16, further recited that “the carrier has two opposing slots, each of the slots having an open end and closed end” and that the shoe “has lugs for sliding into the open ends of the slots, the slots and lugs thereby cooperating to retain the shoe on the carrier.” See Amdt. filed Aug. 30, 1999. 2. In an Office Action mailed October 4, 1999, the Examiner rejected claims 1, 2, 8-10, 13, 15-17, and 19 under 35 U.S.C. § 103(a) as being unpatentable over Lance (US 5,309,990, iss. May 10, 1994). Appeal 2011-008482 Application 10/345,836 5 3. In response to the Office Action mailed October 4, 1999, Appellant amended claim 1 and some of the claims depending therefrom solely to resolve antecedent basis concerns raised by the Examiner, and amended claim 14 to depend from claim 18. No other amendments were made to the claims. Appellant traversed the rejection of the claims under 35 U.S.C. § 103(a) by arguing that [t]o suggest that [the fulcrum ribs 80, 82 of Lance] are “tongues” (or “lugs” in the case of Claims 10 and 17) and “grooves” that cooperate to retain a gripper shoe on a gripper base as set forth in the claims is not correct, as there is no mention of any sort of cooperation between the ribs and the [grooves] to retain anything, much less a gripper shoe on a base. (See last line of claim 1, which requires that elements cooperate to retain the shoe on the base.). It is therefore submitted the elements cited in Lance do not meet the limitations of the claims. Furthermore, the fulcrum ribs 80 and 82 of Lance extend in a direction that is parallel to the “common plane”, which is the plane in which both chains revolve. The claims require tongue and grooves that cooperate by sliding in a direction that is perpendicular to the common plane. Lance plainly cannot meet this interpretation under the Examiner’s interpretation. With respect to Claims 10 and 17, the Examiner’s argument regarding open and closed ends . . . appears to be moot in view of the remarks made above. Amdt. filed Feb. 4, 2000, pp. 3-4. 4. In an Office Action mailed March 23, 2000, on pages 2 and 3, the Examiner maintained the rejection of claim 16 as being anticipated by Lance, indicated that claims 1-15, 18, and 19 were allowable, and objected to claim 17 as being dependent upon a rejected claim but Appeal 2011-008482 Application 10/345,836 6 indicated that it would be allowable if rewritten in independent form including the limitations of claim 16. 5. In an Amendment filed July 24, 2000, Appellant canceled dependent claim 17, and amended independent claim 16 to include the limitations of canceled claim 17. Appellant argued that, “[t]herefore, because Claim 17 was indicated as defining allowable subject matter, Claim 16 should now be allowable.” Amdt. filed Jul. 24, 2000, p. 3. Appellant also added new independent claim 20 and dependent claims 21-25. Id. at 2-3. Claim 20 recited “a gripping shoe connected to the carrier by means of tongues that slide into corresponding grooves in directions generally perpendicular to the common plane for retaining the shoe on the carrier.” Id. at 2. 6. On August 11, 2000, the Examiner issued a Notice of Allowability without further comment. 7. Appellant’s patent (US 6,173,769 B1) issued on January 16, 2001 with independent claims 1, 10, 18 (formerly claim 16), and 19 (formerly claim 20). Prosecution of the Present Reissue Application 8. In an Office action mailed July 12, 2004, the Examiner rejected claims 1-3, 8, 10-12, 15, 17, 19-21, 25, and 26 under 35 U.S.C. § 102(b) as being anticipated by the 800 Series Coiled Tubing Injector by Stewart & Stevenson (the Stewart & Stevenson injector). 9. In response to the rejection in the Office Action mailed July 12, 2004, Appellant amended claim 1, in the last paragraph, to add “the tongues and grooves being arranged for enabling dismounting the shoe in a sliding motion in a direction generally perpendicular to the common plane.” Appellant also amended claim 10, in the last paragraph, to Appeal 2011-008482 Application 10/345,836 7 specify that lugs of the base portion are for sliding “along a first axis” and that slots and lugs cooperate to retain the shoe on the carrier “in all directions except along the first axis.” Additionally, Appellant amended claim 19 to further recite “the tongues and grooves being arranged to retain the gripping shoe on the carrier in all directions but the directions generally perpendicular to the common plane.” Amdt. filed Oct. 11, 2004, pp. 2-6. Appellant argued that these additional limitations distinguished the subject matter of claims 1, 10, and 19 over the Stewart & Stevenson injector. Amdt. filed Oct. 11, 2004, p. 11. 10. Subsequently, in an Office Action mailed February 20, 2007, the Examiner withdrew the rejection under 35 U.S.C. § 102(b), in response to Appellant’s amendments and remarks in the Amendment filed October 11, 2004, and rejected claims 25-30 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. This rejection was made final in the Office Action mailed February 9, 2009. PRINCIPLES OF LAW A patentee may not regain through reissue subject matter surrendered in an effort to obtain allowance of the original claims. In re Mostafazadeh, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011). “Under this rule against recapture, ‘claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution are impermissible.’” Id. (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997). Appeal 2011-008482 Application 10/345,836 8 The recapture rule is applied as a three-step process. Mostafazadeh, 98 USPQ2d at 1642. In the first step, we determine whether, and in what respect, the reissue claims are broader than the original patent claims. Id.; N. Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). Next, in the second step, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution. Mostafazadeh, 98 USPQ2d at 1642. “‘To determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection.’” Id. (quoting Clement, 131 F.3d at 1469). Finally, in the third step, we “‘determine whether the surrendered subject matter has crept into the reissue claim.’” Mostafazadeh, 98 USPQ2d at 1642 (quoting Clement, 131 F.3d at 1469). Violation of the rule against recapture may be avoided under this final step of the analysis if the reissue claims “materially narrow” the claims relative to the original claims [i.e., the claims before the surrender] such that full or substantial recapture of the subject matter surrendered during prosecution is avoided. Mostafazadeh, 98 USPQ2d at 1642 (quoting N. Am. Container, 415 F.3d at 1349). ANALYSIS The First Step Each of the independent original patent claims 1, 10, 18, and 19 calls for either tongues in the shoe for sliding in grooves in the carrier or lugs in the shoe for sliding into open ends of slots in the carrier. See Facts 1, 3, 5, and 7. The independent reissue claims 25, 27, and 29 do not require Appeal 2011-008482 Application 10/345,836 9 tongues, lugs, grooves, or slots, much less tongues for sliding in grooves or lugs for sliding into open ends of slots. Therefore, reissue claims 25, 27, and 29 are broader than the original patent claims with respect to the tongues in the shoe for sliding in grooves in the carrier or lugs in the shoe for sliding into open ends of slots in the carrier. The Second Step In the arguments presented in the Amendment filed February 4, 2000, Appellant relied on the tongues (or lugs) and grooves that cooperate by sliding in a direction perpendicular to the common plane to distinguish the claimed subject matter over the Lance reference in order to overcome a prior art rejection. See Facts 2 and 3. Inasmuch as rejected claims 10 and 17 recited “slots” rather than “grooves,” we understand Appellant’s reference to “grooves” in the argument to be directed to either “slots” or “grooves.” We find that by making these arguments, Appellant surrendered claim scope that does not include tongues (or lugs) and grooves (or slots) that cooperate by sliding, either in a direction perpendicular to the common plane or to retain the shoe on the carrier. See Hester Indus., Inc. v. Stein Inc., 142 F.3d 1472, 1481-82 (Fed. Cir. 1998) (holding that a surrender can occur through arguments alone). Additionally, by amending independent claim 16, in the Amendment filed July 24, 2000, to include the limitations that “the carrier has two opposing slots, each of the slots having an open end and closed end” and that the shoe “has lugs for sliding into the open ends of the slots, the slots and lugs thereby cooperating to retain the shoe on the carrier,” Appellant again conceded that these limitations were necessary to overcome the prior art rejection based on the Lance reference. See Fact 5. As such, this amendment also evidences surrender of claim scope that does not include Appeal 2011-008482 Application 10/345,836 10 slots and lugs for sliding into the open ends of the slots such that the slots and lugs cooperate to retain the shoe on the carrier. Therefore, the broader aspects of reissue claims 25, 27, and 29 (i.e., omission of language directed to the tongues in the shoe for sliding in grooves in the carrier or lugs in the shoe for sliding into open ends of slots in the carrier) relate to subject matter surrendered in the original prosecution. The Third Step Having determined that Appellant did surrender subject matter, and that reissue claims 25, 27, and 29 have been broadened in aspects related to subject matter surrendered in the original prosecution, the final step of the analysis is to determine whether the reissue claims have been materially narrowed relative to the original claims (i.e., the claims before the surrender) such that full or substantial recapture of the subject matter surrendered during prosecution is avoided. Appellant argues that “claims 25-30 are materially narrower in some aspects and therefore avoid the recapture rule.” App. Br. 12. In particular, Appellant points to the language in reissue claim 25 directed to “interlocking members including structure to prevent relative movement of the gripper shoe with respect to the carrier in directions generally parallel to the common plane but to permit relative movement of the gripper shoe in a direction generally perpendicular to the common plane.” Appellant also points to language in reissue claim 27 directed to a coupling element configured so that the coupling element couples in a manner that (a) permits relative sliding movement of the gripper shoe along a first axis within a second plane perpendicular to the first plane in order to enable quick decoupling in the one direction, but (b) prevents any substantial relative movement in other directions. Appeal 2011-008482 Application 10/345,836 11 Finally, Appellant refers to language in claim 29 directed to first and second coupling elements being configured (a) to permit relative movement of the gripper shoe and carrier along an axis in a plane parallel to a central axis of the tubing or tool, to enable quick assembly or release of the gripper shoe to and from the carrier along the axis, but lb) [sic: (b)] to prevent any substantial movement of the gripper shoe in directions other than along the axis. Appellant further asserts that the limitations referred to above “are material and represent a narrowing of claimed subject [matter] as compared to claims 1, 10 and 19 of the original patent.” Id. However, the mere argument that the reissue claims have been narrowed “is insufficient [to avoid recapture] without a corresponding demonstration of material narrowing.” Mostafazadeh, 98 USPQ2d at 1644. In an attempt to demonstrate that the asserted narrowing is material, Appellant argues that “independent claims 1, 10 and 19 were amended in this reissue application, in response to a rejection, to add similar limitations.” App. Br. 12 (emphasis added). For the reasons that follow, the fact that the limitations alluded to by Appellant were added to independent claims 1, 10, and 19 in this reissue application does not demonstrate that reissue claims 25, 27, and 29 were materially narrowed relative to the original claims so as to avoid violation of the recapture rule. First, the limitations alluded to by Appellant on pages 12 and 13 of the Appeal Brief were added to claims 1, 10, and 19 to overcome a new prior art rejection (based on the Stewart & Stevenson injector) made in the reissue application, not to overcome the rejection (based on Lance) at issue during the prosecution of the original patent. See Clement, 131 F.3d at 1470 (stating “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 Appeal 2011-008482 Application 10/345,836 12 to the rejection, the recapture rule bars the claim”). Appellant has not explained how, if at all, the limitations in question are germane to the prior art rejection based on Lance (i.e., the rejection to which the broadening aspects in this case are germane). Moreover, these limitations were added to claims 1, 10, and 19 as complements to the limitations relied upon by Appellant to overcome the prior art rejection based on Lance in the original prosecution. Accordingly, these amendments do not demonstrate the materiality of the narrowing limitations without the complementary limitations relied on during prosecution of the original patent to overcome the rejection based on Lance. Additionally, the limitations added to claims 1, 10, and 19 in this reissue application and alluded to by Appellant on pages 12 and 13 of the Appeal Brief, while perhaps “similar” to the narrowing limitations to claims 25, 27, and 29 pointed to by Appellant on page 12 of the Appeal Brief, clearly are not substantially the same as the narrowing limitations to claims 25, 27, and 29, as ostensibly appreciated by Appellant. For example, the language added to claim 1 regarding the tongues being “arranged for enabling dismounting the shoe in a sliding motion in a direction generally perpendicular to the common plane” is not in any of claims 25, 27, and 29. Also, the language added to claim 10 in the reissue application directed to permitting sliding along a first axis and preventing movement in “all directions except along the first axis” is not in any of reissue claims 25, 27, and 29. By contrast, claim 25 recites structure to prevent relative movement in directions generally parallel to the common plane (not all directions); claim 27 recites structure that “prevents any substantial relative movement in other directions” (not in all other directions); and claim 29 recites structure that permits relative movement along an axis in a plane parallel to Appeal 2011-008482 Application 10/345,836 13 the central axis but prevents “any substantial movement of the gripper shoe in directions other than along the axis” (not in all directions other than along the axis). Finally, the language added to reissue claim 19 directed to the tongues and grooves being arranged to retain the shoe “in all directions but the directions generally perpendicular to the common plane” likewise is not in any of reissue claims 25, 27, and 29. We additionally note that the recitation of a “coupling element” in reissue claim 27 has little, if any, structural significance without corresponding recitation of structure to which the coupling element couples. Appellant has not satisfied his burden of demonstrating that reissue claims 25, 27, and 29 have been materially narrowed so as to avoid violation of the recapture rule. We sustain the rejection of these claims and of dependent claims 26, 28, and 30, which fall with claims 25, 27, and 29. DECISION For the above reasons, the Examiner’s decision 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 hh Copy with citationCopy as parenthetical citation