Ex Parte Hollingsworth

Board of Patent Appeals and Interferences

Feb 17, 2010

10170069 (B.P.A.I. Feb. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JIMMY L. HOLLINGSWORTH, JR.
____________

Appeal 2009-014399
Application 10/170,069
Patent 6,073,699
Technology Center 3600
____________

Decided: February 17, 2010
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and ROBERT E. NAPPI and LINDA E. HORNER, Administrative Patent
Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Jimmy L. Hollingsworth, Jr. (Appellant) seeks our review under
35 U.S.C. § 134 of the Examiner’s final rejection of October 25, 2007 in
reissue application 10/170,069. The reissue application seeks to reissue
U.S. Patent 6,073,699 (“the ’699 patent”), issued June 13, 2000, based on
Application 09/036,271, filed March 6, 1998. The reissue application
contains claims 1-7. The Examiner has rejected claims 4-7, which are all of
the claims on appeal. Claims 1-3 are indicated as being allowable. We have
jurisdiction under 35 U.S.C. § 6(b) (2006).

THE INVENTION
Appellant’s claimed invention is directed to a wellbore tubular
elevator with a two-part body with parts of the body hinged on each side of
the elevator. ‘699 patent, col. 4, ll. 18-23. Figures 1A and 1C are
reproduced below.

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Figure 1A shows a side view of an elevator of the invention.
Figure 1C shows a top view of the elevator of Figure 1A. ‘699 patent,
col. 5, ll. 8-11. As shown in Figures 1A and 1C, the elevator has a body 12
with two parts 14 and 16 which are hinged together. Lifting ears 28 are on
each side of the body. Thus, the elevator may be selectively opened from
either side as desired. A tubular resides in an opening 38 defined between
inner surfaces of the two parts 14 and 16. ‘699 patent, col. 5, ll. 21-33.
Figure 2, reproduced below, is a partial side view of an elevator
according to the invention.

As shown in Figure 2, the elevator may have rollers 46 rotatably
mounted to a part of the body 12 to facilitate movement of a tubular 48 with
respect to the elevator. ‘699 patent, col. 5, ll. 34-37. As shown in Figure 2,
a first upper roller has the roller portion protruding into the interior opening
for contacting an exterior surface of a wellbore tubular within the interior
opening. ‘699 patent, col. 6, ll. 24-30, claim 1. A second lower roller is
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disposed beneath the first and second body parts and is disposed entirely
exteriorly of the interior opening to facilitate movement of a wellbore
tubular with respect to the elevator. ‘699 patent, col. 6, ll. 31-34, claim 1.
Original patent claims 1-3, which correspond to reissue claims 1-3,
are directed to an embodiment of the elevator having first and second body
parts, which are hingedly connected together and open on a side of the
elevator, and at least two rollers as shown above in Figure 2. Reissue
claims 4-7 are directed to an embodiment of the elevator having first and
second body parts, each body part have a lifting ear, the elevator also having
first and second hinge apparatuses to permit the two body parts to be
hingedly openable on first and second sides of the elevator. Representative
appealed reissue claim 4 is reproduced below:
4. An elevator for use in wellbore operations, the elevator
comprising:
a first body part having a first lifting ear;
a second body part having a second lifting ear;
the body parts together defining an interior opening
through the elevator for accommodating a wellbore tubular
therein,
first hinge apparatus hingedly connecting the two body
parts together and permitting the two body parts to be hingedly
openable on a first side of the elevator; and
second hinge apparatus disposed across from the first
hinge apparatus, the second hinge apparatus hingedly
connecting the two body parts together and permitting the two
body parts to be hingedly openable on a second side of the
elevator.
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THE REJECTION
Appellant seeks review of the Examiner’s rejection of reissue claims
40, 43, 55, 58, 65, 67-71, 73, 74, and 77 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.

ISSUE
The Examiner found that Appellant amended the original application
to add “at least one second roller disposed beneath the first and second body
parts and disposed entirely exteriorly of the interior opening to facilitate
movement of a wellb[o]re tubular with respect to the elevator” and then
argued that this limitation distinguished the claimed invention over the prior
art. Ans. 3. The Examiner determined that because reissue claims 4-7 do
not contain the second roller limitation, they violate the rule against
recapture. Id.
Appellant admits that “[reissue claims 4-7] are broader [than the
patent claims] due to the absence of the ‘second roller’ limitation,” and does
not contest the Examiner’s finding that this broader aspect relates to subject
matter surrendered during prosecution of the original patent. App. Br. 9.
Nonetheless, Appellant argues that the addition of the “lifting ears” feature
to reissue claims 4-7 renders these claims materially narrower in other
overlooked aspects such that reissue claims 4-7 overcome the recapture rule.
App. Br. 10.
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The issue presented by this appeal is:
Did the Examiner err in determining that reissue claims 4-7 fail step 3
of the test for impermissible recapture as articulated in In re Clement, 131
F.3d 1464, 1470 (Fed. Cir. 1997)?

FINDINGS OF FACT
The following findings of fact are supported by a preponderance of
the evidence.
A. The Invention
1. According to Appellant (‘699 patent, Abstract):
A new elevator for use in wellbore operations has
been invented which, in certain aspects, has a first body
part, a second body part, the body parts together defining
a interior opening through the elevator for
accommodating a wellbore tubular therein, first hinge
apparatus hingedly connecting the two body parts
together and permitting the two body parts to be hingedly
openable on a first side of the elevator, and second hinge
apparatus disposed across from the first hinge apparatus,
the second hinge apparatus hingedly connecting the two
body parts together and permitting the two body parts to
be hingedly openable on a second side of the elevator. In
certain aspects such an elevator has at least one roller
secured to an interior of at least one of the body parts to
facilitate movement of a wellbore tubular with respect to
the elevator, and inparticular [sic] aspects has a plurality
of spaced apart rollers. In one such elevator the plurality
of rollers is one or more rollers on each body part.

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B. Prosecution history of the original application
2. The patent sought to be reissued is based on Application
09/036,271, filed March 6, 1998 (the “original application”).
3. As filed, the original application contained claims 1-5 including
representative independent claim 1 which is reproduced below:
1. An elevator for use in wellbore operations, the elevator
comprising
a first body part,
a second body part,
the body parts together defining an interior opening
through the elevator for accommodating a wellbore tubular
therein,
first hinge apparatus hingedly connecting the two body
parts together and permitting the two body parts to be hingedly
openable on a first side of the elevator, and
second hinge apparatus disposed across from the first
hinge apparatus, the second hinge apparatus hingedly
connecting the two body parts together and permitting the two
body parts to be hingedly openable on a second side of the
elevator.
4. On May 12, 1998, Appellant filed a Preliminary Amendment
adding claims 6-20 and canceling claim 5.
5. After filing of the Preliminary Amendment:
(a) The claims consisted of independent claims 1, 10, and 16;
and dependent claims 2-4, 6-9, 11-15, and 17-20.
(b) Dependent claims 11-15 did not depend from any
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independent claim and instead cyclically depended from each other.
6. On July 12, 1999, Appellant filed a Second Preliminary
Amendment1 adding claims 21-27 and canceling claims 1-4, 6, 9, 16-18,
and 20.
7. After filing of the Second Preliminary Amendment:
(a) The claims consisted of independent claims 10, 21, 23, 25,
and 26; and dependent claims 7, 8, 11-15, 19, 22, 24, and 27.
(b) Dependent claims 7 and 8 were amended to depend from
newly added claim 21.
(c) Dependent claim 19 was not similarly amended and
depended from canceled claim 17.
(d) Dependent claims 11-15 were not amended and still
depended from each other.
8. After filing of the Second Preliminary Amendment, the original
application contained claims 7-8, 10-15, 19, and 21-27 including
representative independent claims 10 and 21, and dependent claim 11, which
are reproduced below:
10. A wellbore tubular support system comprising
an upper elevator for selectively and releasably holding a
string of wellbore tubulars,
upper elastic straps connected to and beneath the upper
elevator,

1 At filing, the Second Preliminary Amendment was mislabeled as “Third
Preliminary Amendment.” The Office relabeled the amendment.
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swivel apparatus below the upper elevator and to which
the upper elastic straps are connected,
lower elastic straps connected to and below the swivel
apparatus, and
a lower elevator below the swivel apparatus and to which
the lower elastic straps are connected.
11. The wellbore tubular support system of claim 13, wherein
the elevator comprises
a first body part,
a second body part,
the body parts together defining an interior opening
through the elevator for accommodating a wellbore tubular
therein,
first hinge apparatus hingedly connecting the two body
parts together and permitting the two body parts to be hingedly
openable on a first side of the elevator, and
second hinge apparatus disposed across from the first
hinge apparatus, the second hinge apparatus hingedly
connecting the two body parts together and permitting the two
body parts to be hingedly openable on a second side of the
elevator.
21. An elevator for use in wellbore operations, the elevator
comprising
a first body part,
a second body part,
the body parts together defining an interior opening
through the elevator for accommodating a wellbore tubular
therein,
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the body parts connected together and hingedly openable
on a side of the elevator,
at least one first roller secured to at least one of the body
parts to facilitate movement of a wellbore tubular within and
with respect to the elevator,
wherein the least one first roller has a roller portion
thereof protruding into the interior opening for contacting an
exterior surface of a wellbore tubular within the interior
opening.
9. Simultaneously with the Second Preliminary Amendment,
Appellant filed an Information Disclosure Statement (“IDS”) citing six prior
art references and an International Search Report (listing the six references)
from the International Application PCT/GB99/00664 corresponding to the
original application.
10. The prior art submitted with the IDS included:
Holmes US 1,021,984 Apr. 2, 1912
Schivley US 4,834,441 May 30, 1989
Stringfellow EP 0171144 Oct. 18, 1989
11. The International Search Report indicated for claims 1-5 of the
PCT application2, with respect to Holmes and Schivley each taken
separately, that “the claimed invention cannot be considered novel or cannot
be considered to involve an inventive step when the document is taken
alone.”

2 Appellant’s International Publication WO 99/45230 of International
Application PCT/GB99/00664 shows that, although they are not duplicates,
the contents of PCT claims 1-5 correspond to originally filed claims 1-5 of
Appellant’s original application 09/036,271.
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12. With respect to the original application, Holmes, Schivley, and
Stringfellow are prior art under 35 U.S.C. § 102(b).
13. On September 9, 1999, the Examiner entered a Non-Final
Office Action (“Non-Final Action”). Facts 14 through 21, infra, relate to this
office action.
14. Claims 7-8, 10-15, 19, and 21-27 were rejected on various
grounds.
15. The prior art relied upon by the Examiner in rejecting the
claims was:
Taylor US 3,140,523 Jul. 14, 1964
Stringfellow EP 0 171 144 A1 Feb. 12, 1986
16. With respect to the original application, Taylor and
Stringfellow are prior art under 35 U.S.C. § 102(b).
17. Claims 11-15 and 19 were rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite because in-part (Non-Final 2):
(a) Dependent claims 11-15 do not depend from any
independent claim and instead cyclically depend from each other.
(b) Dependent claim 19 depends from canceled claim 17.
18. Claim 10 was rejected under 35 U.S.C. § 102(b) as being
anticipated by Stringfellow.
19. Claims 7 and 21-27 were rejected under 35 U.S.C. § 102(b) as
being anticipated by Taylor.
20. Claim 8 was rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taylor.
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21. In order to maintain a compact prosecution, the Examiner
presumed that claim 11 properly depended from claim 10 and that claim 12
proper depended from either claim 10 or 11. Based on this presumption,
claims 11-15 were rejected under 35 U.S.C. § 103 as being unpatentable
over Stringfellow and Taylor.
22. On October 18, 1999, Appellant filed a Third Amendment (“the
Third Amendment”) responding to the Examiner’s Non-Final Action.
23. The Third Amendment canceled claims 7-8, 10-15, 19, and
21-27 (all pending claims) and added new claims 28-32. Newly added
claim 28 is representative and is reproduced below:
28. An elevator for use in wellbore operations, the elevator
comprising
a first body part,
a second body part,
the body parts together defining an interior opening through
the elevator for accommodating a wellbore tubular therein,
the body parts hingedly connected together and hingedly
openable on a side of the elevator,
at least one first roller secured to at least one of the body parts
to facilitate movement of a wellbore tubular within and with respect to
the elevator,
wherein the at least one first roller has a roller portion thereof
protruding into the interior opening for contacting an exterior surface
of a wellbore tubular within the interior opening, and
at least one second roller disposed beneath the first and second
body parts and disposed entirely exteriorly of the interior opening to
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facilitate movement of a wellbore tubular with respect to the elevator.
24. After entry of the Third Amendment, the application claims
were 28-32.
25. In the Third Amendment, Appellant argued:
Claims 7, 8, 10-15, 19, and 21-27 have been rejected for
various reasons under §§ 102, 103, and 112. These claims have
been cancelled. No counterpart is presented here to any claim
rejected under § 112.
26. In the Third Amendment, Appellant also argued with respect to
the patentability of newly-added claims 28-32:
New claims 28-32 all include the limitation of at least
one roller disposed beneath body parts and entirely exteriorly of
an opening defined by the body parts. EP 171,144
[Stringfellow] has no teaching or suggestion of roller(s).
Taylor, Jr. discloses multiple balls 33 or rollers 33; but Taylor,
Jr. Has [sic] no teaching or suggestion of a roller beneath its
elevators body sections 1 and 2.
27. Appellant’s argument (see fact 26 above) addressed at least the
following limitation of Appellant’s amended claim 28:
(1) at least one second roller disposed beneath the first and second
body parts and disposed entirely exteriorly of the interior
opening.
Limitation (1) was found in some form in each of the newly-added
prosecution claims 28-32.
28. On December 9, 1999, the Examiner entered a Final Office
Action (“Final Action”). Facts 29 and 30, relate to this Final Action.
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29. Claims 31-32 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taylor.
30. Claims 28-30 were indicated as allowable.
31. On December 21, 1999, Appellant filed a Fourth Amendment
(“the Fourth Amendment”) responding to the Examiner's Final Office
Action.
32. The Fourth Amendment canceled claims 31-32.
33. On January 11, 2000, a Notice of Allowability was mailed
which stated that pending claims 28-30 were allowed.
34. Application claims 28-30 were renumbered as patent claims 1-3
in the course of preparing the original application for issue.
35. U.S. Patent 6,073,699 issued June 13, 2000, based on the
original application and contained claims 1-3.

C. Prosecution of reissue application
36. Appellant filed reissue application 10/170,069 on June 12,
2002, seeking to reissue U.S. Patent 6,073,699.
37. Appellant presented original patent claims 1-3 along with a new
reissue application claim 4 (hereinafter referred to as “previously-appealed
reissue claim 4”) for consideration.
38. Previously-appealed reissue claim 4 read as follows:
4. An elevator for use in wellbore operations, the elevator
comprising

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a first body part,
a second body part,
the body parts together defining an interior opening through
the elevator for accommodating a wellbore tubular therein,
first hinge apparatus hingedly connecting the two body parts
together and permitting the two body parts to be hingedly openable on
a first side of the elevator, and
second hinge apparatus disposed across from the first hinge
apparatus, the second hinge apparatus hingedly connecting the two
body parts together and permitting the two body parts to be hingedly
openable on a second side of the elevator.
39. The Examiner rejected previously-appealed reissue claim 4
under 35 U.S.C. § 251 as being an improper recapture of surrendered subject
matter.
40. Appellant appealed the Examiner’s decision rejecting
previously-appealed reissue claim 4 to the Board.
41. In a decision dated June 25, 2007, the Board affirmed the
Examiner’s decision rejecting the claim under § 251 and entered a new
ground of rejection of previously-appealed reissue claim 4 under § 102(b) as
being anticipated by both the Holmes and Schively patents.
42. In particular, the Board determined, inter alia:
We also conclude that Appellant has not shown that an
“objective observer” would reasonably view the reissue claim as
materially narrowed thus avoiding the surrendered subject
matter, and that with respect to this argument Appellant has not
rebutted the Examiner’s prima facie showing of recapture.
Decision 45.
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43. Following the Board’s 2007 decision, Appellant amended
previously-appealed reissue claim 4 to add first and second lifting ears, as
found in the presently-appealed reissue claim 4, and to add appealed reissue
claims 5-7.
44. The Examiner rejected reissue claims 4-7 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. Final Office Action, dated October 24, 2007, at 2.
45. Appellant now appeals from this adverse decision of the
Examiner.

D. Examiner’s Rejection under 35 U.S.C. § 251
46. The Examiner has rejected reissue application claims 4-7 under
35 U.S.C. § 251 maintaining that the claims seek to “recapture” subject
matter surrendered in obtaining allowance of the claims which appear in the
patent sought to be reissued.
47. The Examiner based the rejection of claims 4-7 on the grounds
that when faced in the original application with a rejection under 35 U.S.C.
§ 112 and a rejection under 35 U.S.C. § 103(a) over Taylor, Appellant made
at least two significant amendments on October 18, 1999 (Answer 3):
(A) Appellant cancelled all the claims in the application; and
(B) Appellant added new claims 28-32 all of which included
in some form the limitation of “at least one second roller disposed
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beneath the first and second body parts and disposed entirely
exteriorly of the interior opening.”
Application claims 28-30 ultimately became patent claims 1-3.
48. Additionally, the Examiner based the rejection of reissue claims
4-7 on the grounds that when faced in the original application with a
rejection under 35 U.S.C. § 112 and a rejection under 35 U.S.C. § 103(a)
over Taylor, Appellant argued that the limitation of “at least one roller
disposed beneath body parts and entirely exteriorly of an opening defined by
the body parts” distinguished over the prior art (see Finding of Fact 26)
(Answer 3).
49. The record supports the Examiner’s findings with respect to
what limitations do not appear in reissue application claims 4-7 which were
present in claims 1-3 of the original application, as allowed.
50. Additional findings of fact appear in the analysis and rejection
sections infra as necessary.

PRINCIPLES OF LAW
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
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“deliberate withdrawal or amendment … cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993) (quoting Haliczer v. United States, 356
F.2d 541, 545 (Ct. Cl. 1966)); see also Hester Industries Inc. v. Stein, Inc.,
142 F.3d 1472, 1480 (Fed. Cir. 1998).
The Federal Circuit's opinion in Clement discusses a three-step test for
analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
element from a patent claim is broader as to that limitation's or element's
aspect. 131 F.3d at 1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. 131 F.3d at
1468-69. In this respect, review of arguments and/or amendments during the
prosecution history of the application, which matured into the patent sought
to be reissued, is appropriate. In reviewing the prosecution history, the
Federal Circuit observed that “[d]eliberately canceling or amending a claim
in an effort to overcome a [prior art] reference strongly suggests that the
Applicant admits that the scope of the claim before cancellation or
amendment is unpatentable.” 131 F.3d at 1469. See also Hester Industries,
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142 F.3d at 1481 (“an amendment to overcome a prior art rejection
evidences an admission that the claim was not patentable”).
Step 3 of the Clement test is applied when the broadening relates to
surrendered subject matter and involves a determination whether the
surrendered subject matter has crept into the reissue application claim. Id.
The following principles were articulated in Clement, 131 F.3d at 1469-70:
Sub-step (1): if the reissue claim is as broad as or broader than
the canceled or amended claim in all aspects, the recapture rule bars
the claim;
Sub-step (2): if the reissue claim is narrower in all aspects, the
recapture rules does not apply, but other rejections are possible;
Sub-step (3): if the reissue claim is broader in some aspects, but
narrower in others, then:
(a) 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 to the rejection, the recapture rule
bars the claim;
(b) if the reissue claim is narrower in an aspect germane
to [a] prior art rejection, and broader in an aspect unrelated to
the rejection, the recapture rule does not bar the claim, but other
rejections are possible.
The Board’s prior 2007 decision in the present application contains a
detailed exposition on the case law on reissue and the recapture rule. Rather
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than reiterate such a detailed statement of the law in this opinion, we adopt
the Principles of Law as stated in the Board’s prior 2007 decision for
purposes of our analysis that follows. We pay particular attention to the
portion of the prior decision discussing burden of proof (Decision 25-32),
which holds that an examiner has the burden of making out a prima facie
case of recapture including a rebutable presumption of surrender, and then
the burden of persuasion shifts to the appellant to establish that the
prosecution history of the application, which matured into the patent sought
to be reissued, establishes that a surrender of subject matter did not occur or
that the reissue claims are materially narrowed (Decision 24). The prior
decision explained that to rebut an examiner’s prima facie case of recapture,
an appellant can show that an “objective observer” would view the reissue
claims as materially narrowed. The prior decision reviewed the case law
pertaining to “materially narrowed in overlooked aspects” (Decision 33-39)
and explained:
In summary, the recapture rule is avoided if the reissue
claim was materially narrowed in other respects compared to its
broadening surrendered aspect. A reissue claim is materially
narrowed and thus avoids the recapture rule when limited to
aspects of the invention:
(1) which had not been claimed and thus were
overlooked during prosecution of the original patent
application; and
(2) which patentably distinguish over the prior art.
Decision 38-39 (footnote omitted).
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ANALYSIS
Appellant argues reissue claims 4-7 as a group (App. Br. 9-10). We
select claim 4 as the representative claim, and the remaining claims 5-7
stand or fall with claim 4. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellant does not dispute the Examiner’s determination according to
step 1 of the Clement test that the rejected reissue claims are broader than
the issued patent claims because they omit the “second roller” limitation.
App. Br. 9. Appellant also does not dispute the Examiner’s determination
according to step 2 of the Clement test that the broader aspects of the
rejected reissue claims relate to subject matter surrendered during
prosecution of the original patent claims. App. Br. passim, Reply Br.,
passim. Rather, Appellant’s arguments focus on step 3 of the Clement test,
and in particular, Appellant posits that by adding new “lifting ears” features
to the reissue claims 4-7, the claims avoid recapture of surrendered subject
matter because the claims are materially narrower in other overlooked
aspects. App. Br. 10.
Our Findings of Fact 46-48 set out the basis upon which the Examiner
originally made a recapture rejection in the Final Office Action from which
this appeal is taken. As noted in our Finding of Fact 49, the record supports
the Examiner’s findings with respect to claims 4-7.
While the recitations that the first and second body parts each have a
lifting ear renders the claims as a whole narrower in one aspect from the
patent claims, these recitations are narrower in an aspect unrelated to the
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prior art rejection, and the claims are broader in an aspect germane to the
prior art rejection. Thus, the rejected reissue claims fail sub-step (3) of step
3 of the Clement test. North American Container, 415 F.3d at 1350 (holding
that “broader in an aspect germane to a prior art rejection” of the Clement
test means broader with respect to a specific limitation added to overcome
prior art in prosecution of the original application and eliminated in the
reissue claims).
The Examiner’s accurate factual analysis with respect to reissue claim
4 demonstrates that the Examiner has made out a prima facie case of
recapture consistent with the test set forth in Clement and amplified in
Hester.
Further, we hold that the burden of persuasion now shifts to Appellant
to establish that reissue claim 4 is materially narrowed in overlooked
aspects.
We find Appellant’s showing fails to adequately rebut the Examiner’s
prima facie case including a rebuttable presumption that surrender did occur.
Appellant argues reissue claim 4 includes an overlooked aspect because it
recites the new feature of the “lifting ears” in addition to the “hinges” and
that the “lifting ears” feature had never been claimed or prosecuted during
prosecution of the original patent application. We agree that the “lifting
ears” feature was never claimed or prosecuted during the prosecution of the
original patent application. Appellant, however, fails to meet his burden to
show how reissue claim 4 patentably distinguishes over the prior art.
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Rather, Appellant argues, “[i]n light of the Examiner’s failure to reject the
claims based on any prior art, Applicant can only presume that the Examiner
agrees pending claims 4-7 are patentably distinguished over the prior art.”
App. Br. 9. Appellant cannot meet the burden of showing an overlooked
aspect patentably distinguishes over the art solely by inferring such facts
based on the Examiner’s omission of a prior art rejection. As the Board
noted in its prior 2007 decision, the Examiner may have opted not to enter a
prior art rejection against claim 4 because “the Examiner may have felt the
recapture rejection was sufficient and declined to reach other possible
grounds of rejection preferring instead to expedite prosecution.” Decision
45 n.9.
We agree with the prior panel’s findings, in entering the new ground
of rejection against previously-appealed reissue claim 4 as being anticipated
by Holmes, that Holmes discloses all of the elements of previously-appealed
reissue claim 4, including first and second body parts, which define an
interior opening, and first and second hinge apparatuses, as was claimed.
Decision 46. The only difference between the presently-appealed reissue
claim 4 and the previously-appealed reissue claim 4 is that the presently-
appealed reissue claim 4 further recites that each body part has a lifting ear.
Holmes discloses lifting ears (end lugs a a). The sole difference between the
elevator of Holmes and the claimed elevator of presently-appealed reissue
claim 4 is that in the elevator of Holmes, both of the lifting ears (end lugs a
a) are provided on the first body part (main strap portion A), while presently-
Appeal 2009-014399
Application 10/170,069
Patent 6,073,699

24
appealed reissue claim 4 recites that a first lifting ear is on the first body part
and a second lifting ear is on the second body part.
The Taylor patent, however, relied upon by the Examiner to reject the
pending claims during the prosecution of the original application, shows an
elevator having a first body part 1 having a first lifting ear 5 and a second
body part 2 having a second lifting ear 5, the lifting ears being described as
“constructed in a conventional manner.” Taylor, col. 3, ll. 18-23; fig. 1.
Further, the Taylor patent discloses that the first 1 and second 2 body parts
together define an interior through the elevator for accommodating a
wellbore tubular therein, and a first hinge apparatus 3 hingedly connecting
the two body parts 1, 2 together and permitting the two body parts to be
hingedly openable on a first side of the elevator. Taylor, col. 3, ll. 7-9 and ll.
24-29; fig. 1. The only difference between Taylor’s elevator and the
claimed elevator of presently-appealed reissue claim 4 is that Taylor’s
elevator has only a single hinge apparatus, whereas reissue claim 4 calls for
a second hinge apparatus disposed across from the first hinge apparatus, the
second hinge apparatus hingedly connecting the two body parts together and
permitting the two body parts to be hingedly openable on a second side of
the elevator.
Holmes teaches that elevators having two hinges, one on either end of
the body parts “permits the entire connection to be disassembled for
transportation” and allows the elevator “to be opened in either direction,
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Application 10/170,069
Patent 6,073,699

25
thereby permitting the connection to be operated with great facility and
ease.” Holmes 1, second col., ll. 105-112, and Holmes 2, first col., ll. 1-6.
We conclude that one having ordinary skill in the art would have been led to
modify the elevator of Taylor to have a second hinge apparatus, as called for
in presently-appealed reissue claim 4, in light of the teaching in Holmes of
the advantages of using two hinges on opposite sides of the elevator.
Thus, we fail to see, and Appellant has failed to adequately articulate,
how the invention of presently-appealed reissue claim 4, which recites that
each body part has a lifting ear, patentably distinguishes over the combined
teachings of Taylor and Holmes. As such, Appellant has failed to
sufficiently meet his burden of showing that presently-appealed reissue
claim 4 is directed to a materially-narrowed, overlooked aspect of the
claimed invention, such that the recapture rule does not apply.

CONCLUSION
The Examiner did not err in determining that reissue claims 4-7 fail
step 3 of the test for recapture as articulated in Clement.

DECISION
The decision of the Examiner to reject reissue claims 4-7 is
AFFIRMED.
Appeal 2009-014399
Application 10/170,069
Patent 6,073,699

26
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

Vsh

PATTERSON & SHERIDAN, L.L.P.
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON TX 77056