Ex Parte Govil et al

Patent Trial and Appeal Board

Mar 24, 2017

14663327 (P.T.A.B. Mar. 24, 2017)

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.
1857.186REI1 7338
EXAMINER
LEUNG, CHRISTINA Y
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
14/663,327 03/19/2015 Pradeep K. GOVIL
26111 7590 03/24/2017
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005
03/24/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte PRADEEP K. GOVIL and ANDREW GUZMAN1
Appeal 2017-001241
Application 14/663,327
Patent US 7,372,614 B2
Technology Center 3900
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
maintained rejection2 of claims 6-9 and 11-18 in reissue application
1 Appellants identify ASML HOLDING N.V. as the real party in interest.
Appeal Brief filed June 10, 2016 (“Appeal Br.”), 3.
2 The Examiner has withdrawn additional, previously pending grounds of
rejection under 35 U.S.C. §§ 102 and 103. Final Office Action issued
January 12, 2016 (“Final Act.”), 7-14; Examiner’s Answer issued
September 12, 2016 (“Ans.”), 10.
Appeal 2017-001241
Application 14/663,327
14/663,327, filed March 15, 2015, as a divisional reissue of reissue
application 12/764,557, filed April 21, 2010, a reissue application for U.S.
Patent 7,372,614 B2 (“the ’614 patent”), issued May 13, 2008. Claims 6-9
and 11-18 stand rejected under the doctrine of nonstatutory double patenting
over U.S. Patent 7,224,504 B2 (“the ’504 patent”) and under 35 U.S.C.
§251. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM and designate the rejection under 35 U.S.C. § 251 as a
NEW GROUND OF REJECTION.
THE INVENTION
The claimed subject matter on appeal relates to a deformable optical
device. ’614 Patent, Abstract. Claim 6, reproduced below, is the only
independent claim on appeal, is a new claim relative to the original ’614
patent, and is illustrative of the subject matter on appeal.
6. A deformable optical system, comprising:
a reflection device having a first reflecting surface and a second
surface;
an actuator having a support device and extensions, the
extensions extending from a surface of the support device
and coupled to the second surface; and
a controller coupled to the extensions and configured to:
control a movement of the extensions,
directly measure a movement of the extensions, and
verily a deformation of the first reflecting surface based
on the measured movement.
Appeal Br. (Claims Appendix; underlining omitted) 12-13.
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Application 14/663,327
DISCUSSION
Non-Statutory Double Patenting Rejection
The Examiner sets forth a non-statutory double patenting rejection of
claims 6-9 and 11-22 over claims 1,3,4, 6, and 12-14 of U.S. Patent
7,224,504 B2. Final Act. 16-17; Ans. 8-10. The Examiner maintains the
ground of rejection. Ans. 11.
Appellants do not to address this ground of rejection. Generally
Appeal Br.; Reply Brief filed October 25, 2016 (“Reply Br.”). We,
therefore, are not apprised of any error and affirm pro forma the non-
statutory double patenting rejection of claims 6-9 and 11-22.
Reissue-Recapture Rejection
The Examiner maintains the rejection of claims 6-9 and 11-22 under
35 U.S.C. § 251. Ans. 2-8, 11-12. The rejection is grounded, in the main,
on the reissue oath/declaration being defective because the error Appellants
seek to correct is an error in the ’504 patent rather than in the ’614 patent
and failure to timely file a reissue application for broadening the apparatus
claims of the ’504 is not a correctable error under § 251. Ans. 2-3.
The application from which the ’504 patent issued (Application A)
was subject to a restriction between claims to a deformable device
(apparatus) and to a method. Ans. 3—4. Appellants elected the apparatus
claims without traverse. Ans. 4. Application A then issued as the ’504
patent on May 29, 2007, with apparatus (deformable optical system) claims.
Ans. 4.
The application from which the ’614 patent issued (Application B)
was filed during the pendency of Application A with claims directed to the
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Application 14/663,327
method claims not elected in Application A. Ans. 4. Application B then
issued as the ’614 patent on May 13, 2008. Ans. 4.
Appellants filed reissue application 12/764,557 (Application C) on
April 21, 2010, a date less than two years after the issue date for the ’614
patent, but more than two years for the ’504 patent. Ans. 4. Application C
was filed with apparatus claims and method claims broader than the
apparatus claims and method claims in the ’504 patent and ’614 patent,
respectively. The Examiner held the apparatus claims in Application C to be
constructively non-elected and withdrawn from consideration, Appellants
canceled the apparatus claims, and the Application C issued with method
claims on May 12, 2015. Ans. 4-5.
The instant application was filed by Appellants with apparatus claims
on March 19, 2015, during the pendency of Application C. Ans. 5.
The Examiner maintains that the application for reissue is not well
founded because the claims are not directed to the same invention as the
’614 patent and the error for which correction is sought is the failure to
timely file a reissue application for broadening the apparatus claims in the
’504 patent. Ans. 2-3. The Examiner further maintains that there is no
correctable error in having acquiesced with the Examiner’s restriction
requirement during prosecution of Application A in the election of the
apparatus claims and the filing divisional Application B with method claims
because the error grounded on the failure to traverse a restriction
requirement and to file an application for reissue of the ’504 patent within
two years of its issuance from Application A. Ans. 7-8, 11-12 (citing In re
Watkinson, 900 F.2d 230 (Fed. Cir. 1990); In re Orita, 550 F.2d 1277, 1280
(CCPA 1977)).
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Application 14/663,327
While we appreciate the Examiner’s position, we decline to extend the
application of these cases to the instant case. In both Watkinson and Orita,
the applicants sought and were denied broadening reissue of claims
substantially identical to non-elected claims subject to a restriction
requirement for which a divisional application was never filed. Watkinson,
900 F.2d at 231, 233; Orita 550 F.2d at 1278, 1280-81. As such, in neither
Watkinson nor Orita was there a proper basis set forth for reissue of any
claims in the first instance. In the instant case, however, the reissue sought
is, by way of a divisional of the first reissue application (Application C),
from a patent (the ’614 patent) that issued from an application filed in
response to a restriction requirement (Application B), not from an
application subject to a restriction requirement (Application A).
The instant application, thus, merely takes proper advantage of the
general rules for patent applications allowing divisional reissue applications.
In re Graff, 111 F.3d 874, 876 (Fed. Cir. 1997) (“The statute does not
prohibit divisional or continuation reissue applications, and does not place
stricter limitations on such applications, provided that the statutory
requirements specific to reissue applications are met.”).
As to the broadening, apparatus claims on appeal being untimely
because they were not filed within two years of the issuance the ’504 patent,
the law is contrary to the Examiner’s position. As explained by our
reviewing court in In re Staats, once having met the statutory requirement
that a broadening reissue be applied for within two years, “an applicant is
‘not barred from making further broadening changes’ ... ‘in the course of
[the] prosecution of the reissue application.’” In re Staats, 671 F.3d 1350,
1355 (Fed. Cir. 2012) (quoting Graff, 111 F.3d at 877). The broadening
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Application 14/663,327
changes allowed include introducing claims directed to different
embodiments than those in the original reissue application. Staats, 671 F.3d
at 1350 (Finding “no basis for limiting Doll to situations where later
broadened claims are related to, or are directed to the same embodiment as
in the original application.”).
Nonetheless, we are of the opinion that Appellants are improperly
seeking to recapture through reissue subject matter that was surrendered
during prosecution in order to obtain a valid patent, albeit the ’504 patent,
the parent to the ’614 patent. “The recapture rule ‘prevents a patentee from
regaining through reissue . . . subject matter that he surrendered in an effort
to obtain allowance of the original claims.’” Hester Indus., Inc. v. Stein,
Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998) (quoting In re Clement, 131 F.3d
1464, 1468 (Fed. Cir. 1997)). As explained by our reviewing court, “a
patentee may violate the rule against recapture by claiming subject matter in
a reissue patent that the patentee surrendered while prosecuting a related
patent application.” MBO Laboratories, Inc. v. Becton, Dickinson & Co.,
602 F.3d 1306, 1316 (Fed. Cir. 2010).
In applying the rule against recapture, we follow a three-step analysis.
See, e.g., In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). First, “we
determine whether and in what aspect the reissue claims are broader than the
patent claims.” Id. (internal quotations omitted). Second, we “determine
whether the broader aspects of the reissue claims relate to surrendered
subject matter.” Id. (internal quotations omitted). Third, if the reissue
claims are broader relative to the patented claims in a manner related to
surrendered subject matter, we “determine whether the surrendered subject
matter has crept into the reissue claim.” Id. at 1344 (internal quotations
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Application 14/663,327
omitted). If “the [reissue] claims are materially narrowed in a way that
avoids substantial or whole recapture of the surrendered subject matter”
violation of the rule may be avoided. Id. at 1344^45; see also id. at 1347
(“[I]f the patentee modifies the added limitation such that it is broader than
the patented claim yet still materially narrows relative to the original claim,
the recapture rule does not bar reissue.”). However, “a limitation that is
added during prosecution to overcome prior art cannot be entirely eliminated
on reissue because doing so would constitute recapture of the surrendered
subject matter.” In re Mostafazadeh, 643 F.3d 1353, 1359 (Fed. Cir. 2011).
“[T]he recapture rule is violated when a limitation added during prosecution
is eliminated entirely, even if other narrowing limitations are added to the
claim.” Id. at 1361.
As to the first step, claim 1 from the ’504 patent is reproduced below.
1. A deformable optical system, comprising:
a reflection device having a first reflecting surface and a second
surface;
a piezoelectric actuator having a piezoelectric chuck and
moveable extensions including piezoelectric pins, strips,
or concentric rings, each of the extension being coupled
at a first end to a surface of the piezoelectric chuck and at
a second end to the second surface of the reflection
device;
electrodes individually coupled to corresponding ones of the
extensions; and
a controller coupled to the electrodes configured to control
movement of the extensions via the electrodes,
wherein the control system measures a change in capacitance of
the extensions to determine characteristics of movement
of the extensions.
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Having compared the claim above with claim 6 of the instant application, we
note claim 6 omits the recitation that the actuator is a piezoelectric actuator
(and that the included moveable extensions include piezoelectric pins, strips,
or concentric rings), the recitation of electrodes, and the wherein clause
reciting that the control system measures a change in capacitance “to
determine characteristics of movement of the extensions.” Compare claim 6
with ’504 claim 1.
As to the second step, we look to the prosecution history of the ’504
patent (Application A; Application No. 10/629,798) to determine whether
the broader aspects of the reissue claims relate to surrendered subject matter.
The original, as filed on July 30, 2003, claim 1 from Application A is
reproduced below.
1. A deformable optical system, comprising:
a reflection device having a first reflecting surface and a second
surface;
an integrated circuit actuator having moveable extensions
extending from a support surface and coupled to the
second reflective surface;
electrodes individually coupled to corresponding ones of the
extensions; and
a controller coupled to the electrodes configured to control the
extensions via the electrodes.
Claim 1 was amended to include subject matter—relating to the
piezoelectric actuator—similar to that found in original claim 3 (Amendment
dated July 18, 2006, p. 6), which the Examiner had identified as directed to
allowable subject matter (Non-Final Office Action dated April 21, 2006, p.
3). When the Examiner did not find the amendment to claim 1 sufficient
because amended claim 1 was broader than the original claim 3 (Final Office
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Application 14/663,327
Action dated October 19, 2006, p. 2),3 Appellants further amended claim 1
to include the clause, “wherein the control system measures a change in
capacitance to determine . . . movement of the extensions” (Amendment
after Final dated December 18, 2006). A Notice of Allowability dated April
20, 2007, was issued in response to the Amendment after Final.
On this record, we are of the opinion that both the omitted limitations
as to the piezoelectric actuator and the wherein clause relating to how the
control system operates is related to surrendered subject matter as they were
added during prosecution to obtain allowance of claim 1.
As to the third step, we look to see if the reissue claims are materially
narrowed to avoid substantial or whole recapture of the surrendered subject
matter. Again looking to the reissue claim 6, we note the recitation of “a
controller coupled to the extensions and configured to: control a movement
of the extensions, directly measure a movement of the extensions, and verily
a deformation of the first reflecting surface based on the measured
movement” (claim 6) and contrast that with the ’504 patent’s original claim
1 ’s recitation of a controller coupled to the extensions via coupling through
electrodes and that the “controller is configured to control the extensions,”
also recited as “extending from [the] support surface” (’504 patent, claim 1).
Because the recited reflection device is disclosed as “having a first reflecting
surface and a second surface” (’504 patent Abstract; ’614 Abstract) and the
plain meaning of being configured to control the extensions reasonably
encompasses controlling movement of extensions and measuring their
3 Original claim 3 of Application A recited, inter alia, that “the extensions
are piezoelectric pins fabricated on the piezoelectric chuck,” while the July
18, 2006, amendment to claim 1 included the addition that “moveable
extensions including piezoelectric pins, strips, or concentric rings.”
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Application 14/663,327
movement, including verifying deformation of a surface, where the
reflecting surface and second surface are both surfaces of a reflector, the
recitation of the “controller . . . [as] configured” in claim 6 does not
constitute a narrowing of the claim and as such does not avoid substantial
recapture of the surrendered subject matter.
We note that while claim 6 recites that the controller is coupled to the
extensions, the plain meaning of the claim language does not require direct
coupling and, likewise, to “directly measure a movement of extensions”
does not require direct coupling. It is well established that “the PTO must
give claims their broadest reasonable construction consistent with the
specification. . . . Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.” In
re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” Id.
As to dependent reissue claims, we note that claims 13, 15, and 16
each include limitations relating to one of the two added limitations relied on
to gain allowance of claim 1 in the ’504 patent. Claim 13 includes the
limitation that the “controller is configured to measure a change in
capacitance of the extensions to determine a movement of the extensions.”
Claims 15 and 16 each include limitations as to the actuator comprising a
piezoelectric device. Because none of these claims requires both the recited
configuration of the controller and that the actuator comprises a piezoelectric
device, the effect is to eliminate a limitation added during prosecution to
overcome prior art and this is impermissible recapture of surrendered subject
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matter. See Mostafazadeh, 643 F.3d at 1359, 1361. Where each of the
added limitations relates to a different element, the concern noted in
Youman, that “one might err without deceptive intention in adding a
particular limitation where a less specific limitation regarding the same
feature,. . . would have been sufficient to render the claims patentable over
prior art,” is not implicated. Youman, 679 F.3d at 1346 (quoting In re
Richman, 409 F.2d 269, 274 (CCPA 1969)).
Claim 16 includes an additional limitation as it further recites “a
measuring system configured to measure a wavefront aberration” (Appeal
Br. (Claims App’x) 14), which corresponds to a portion of claim 4 from the
’504 patent, which claim depends from claim 1 (compare the ’504 patent,
claim 4 to Appeal Br. (Claims App’x) 14, claim 16). While the further
limitation narrows the claim, it does not address the other limitation—the
controller limitation recited in pending claim 13—added during prosecution
to overcome prior art and the recapture rule is still violated. Mostafazadeh,
643 F.3d at 1361.
As to the further dependent reissue claims on appeal, claim 7 adds
further limitations to claim 6 that correspond to the last two clauses from the
original (and issued) claim 1 from the ’504 patent. In terms of further
limitations, pending claims likewise relate to issued claims from the ’504
patent as follows; claim 8 to claim 3, claim 9 to claim 4, claim 11 to claim 6,
claim 12 to claim 14, and claim 12 to claim 14. These claims likewise fail to
address both the actuator and controller limitations so as to avoid violation
of the recapture rule.
Pending claims 17 and 18 further recite limitations directed to
coupling the extensions approximately at an edge of the reflection device.
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Application 14/663,327
As the Examiner has determined that such coupling at the edge is provided
in the deformable optical system according to, inter alia, claim 6 (Final Act.
17), a finding that is not contested (see generally Appeal Br.; Ans. 11), we
are the opinion that these further limitations do not materially narrow the
claims so as to avoid substantial recapture of the surrendered subject matter.4
For the reasons above, we determine that the pending claims fail to
meet the requirements for reissue under 35 U.S.C. § 251; however, we
designate the rejection as a new ground.
DECISION
In view of the reasons set forth above, we affirm the Examiner’s non-
statutory double patent rejection of claims 6-9 and 11-18.
Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF
REJECTION against claims 6-9 and 11-18 under 35 U.S.C. § 251.
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
4 Even if arguendo the language of claims 17 and 18, particularly 18,
implicates both the controller and the actuator, there is substantial recapture
where the coupling is provided in the deformable optical system of claim 6.
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED; NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, $ 41.50(b)
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