Ex Parte Goode

Board of Patent Appeals and Interferences

Jun 27, 2011

10345836 (B.P.A.I. Jun. 27, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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