Ex Parte James et al

Board of Patent Appeals and Interferences

Nov 3, 2010

12378967 (B.P.A.I. Nov. 3, 2010)

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.
12/378,967 02/20/2009 Frank A. James Shrink 09.01 4150
26812 7590 11/03/2010
HAYES, SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101
EXAMINER
RADA, RINALDI I
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/03/2010 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 FRANK A. JAMES, JEFFREY C. LINDBERG,
CHARLES MANFREDI, and RICHARD DAVITT
____________________

Appeal 2011-000463
Application 12/378,967
Technology Center 3700
____________________

Before JENNIFER D. BAHR, ALLEN R. MacDONALD, and
KEN B. BARRETT, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 12/378,967

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5 and 7-10. Claims 6 and 11-26 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method for cutting and sealing two layers of film together
near an edge of heat-sealable material by a side sealer apparatus
comprising the steps of:
moving said heat sealable material through said side sealer
apparatus comprises the steps of providing a top drive roll spaced-
apart from a top idler roll and providing a bottom drive roll spaced-
apart from a bottom idler roll and positioned under said top drive roll
and top idler roll respectively
positioning a first pair of spaced-apart belts around and between
said top drive roll and said top idler roll, and positioning a second pair
of spaced-apart belts around and between said bottom drive roll and
said bottom idler roll;
generating heat to cut and seal near said edge of said heat
sealable material with means attached to a bracket suspending said
heat generating means in an air space from a frame of said side sealer
apparatus, and positioning said heat generating means at a
predetermined angle relative to a horizontal plane of said moving
means in the path of said heat-sealable material thereby removing
excess film;
locating said heat generating means in said air space between
said belts positioned on an inner side of said heat generating means
and said belts positioned on an outer side of said heat generating
means;
providing an elongated metal sheathed body having an internal
heating mechanism to generate said heat and a thermocouple; and
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Application 12/378,967

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providing closed loop control of said heat generating means in
accordance with a predetermined temperature setting with means
connected to said thermocouple.

Rejection
The Examiner rejected claims 1-5 and 7-10 under 35 U.S.C. § 251 as
being an improper recapture of surrendered subject matter.
Appellants’ Contention
Appellants contend that the Examiner erred in rejecting claims 1-5
and 7-10 under 35 U.S.C. § 251 as being an improper recapture of
surrendered subject matter because “[t]he amendment of ‘V-belts’ is not
recapturing canceled subject matter” (Original App. Br. 15 (emphasis
omitted); Replacement App. Br. 12, 17, 22, 27).
Issue on Appeal
The sole issue before the Board is whether Appellants have
established that the Examiner erred in rejecting claims 1-5 and 7-10 under
35 U.S.C. § 251 based on recapture.

FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
A. Prosecution history of the original application
1. U.S. Patent 7,281,362 (“the patent”), sought to be reissued, is
based on Application 10/994,691, filed November 22, 2004 (“original
application”).
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2. During prosecution of the original application, the Examiner
pointed out that “BILLET ET AL discloses a conveyer system using v-belts”
(Final Rejection 4 (Sept. 21, 2006)).
3. The Applicants at pages 18-19 of the amendment dated
November 27, 2006, stated that (emphasis added):
In Claim 5 which is dependent on Claim 1, Applicants
have pointed out the location of the heater 28 by calling for
“said heat generating means, being mounted to said bracket
suspending said heat generating means in an air space from a
frame of said side sealer apparatus at said predetermined angle
relative to said horizontal plane, is located in said air space
between said V-belts positioned on an inner side of said heat
generating means and said V-belts positioned on an outer side
of said heat generating means.”
4. The Examiner at page 4 of the non-final office action dated
May 3, 2007, stated that (emphasis added): “Claims 5, 9, and 14 contain
allowable material, if written to clearly delineate the heat generating means
being separate from the sealer as well as the heat generating means being
suspended between the belts.”
5. At page 2 of the Interview Summary dated May 3, 2007, and
attached to the August 14, 2007, Notice of Allowance, the Examiner stated
that:
Applicant [sic] pointed out that the prior art does not
show the heat-generating means positioned in an air space
between the two V-belts.
Examiner agreed but pointed out that while this is
claimed in claims 5, 9, and 13 [sic], it is not recited in the
independent claims.
Applicant and Examiner discussed appropriate
amendments for the independent claims 1, 6, 10, and 15 to
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include the aformentioned [sic] feature and to distinguish them
clearly.
Applicant authorized Examiner to make the amendment
by Examiner’s Amendment.
6. The August 14, 2007, Notice of Allowance also replaced
entirely claims 1, 6, 10, and 15 by essentially adding the subject matter of
claims 5, 9, and 14 to claims 1, 6, and 10 respectively. The amendment to
claim 15 also added similar subject matter.
7. The patent was issued October 16, 2007.
B. Reissue Application
8. The broadening Reissue Application 12/378,967 (“reissue
application”) was filed February 20, 2009.
9. The essence of the claim change in the reissue application is to
amend the repeated references to “v-belts” to “belts.”

PRINCIPLES OF LAW
Surrender – Objective Observer
It is clear that in determining whether “surrender” of
subject matter has occurred, the proper inquiry is whether an
objective observer viewing the prosecution history would
conclude that the purpose of the patentee’s amendment or
argument was to overcome prior art and secure the patent. This
is because the recapture rule is aimed at ensuring that the public
can rely on a patentee’s admission during prosecution of an
original patent. “It is precisely because the patentee amended
his claims to overcome prior art that a member of the public is
entitled to occupy the space abandoned by the patent applicant.
. . . [T]he reissue statute cannot be construed in such a way that
competitors, properly relying on prosecution history, become
patent infringers when they do so.” Mentor Corp. [v.
Coloplast, Inc.], 998 F.2d [992,] 996 [(Fed. Cir. 1993)]; see
also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384
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(Fed. Cir. 1998) (“[T]he ‘recapture rule’ prevents a patentee
from regaining through reissue subject matter surrendered
during prosecution, thus ensuring the ability of the public to
rely on a patent’s public record.”) (emphasis added). Thus, if
the objective public observer can discern a surrender of subject
matter during the prosecution of an original patent in order to
overcome prior art and obtain the patent, then the recapture rule
should prevent the reissuing of that patent to claim the
surrendered subject matter.
Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006) (footnote
omitted).
If the patentee surrendered by argument, he must clearly and
unmistakably argue that his invention does not cover certain
subject matter to overcome an examiner’s rejection based on
prior art. Medtronic[, Inc. v. Guidant Corp.], 465 F.3d [1360,]
1376 [(Fed. Cir. 2006)] (holding that a patent attorney’s
argument did not “clearly and unmistakably surrender” the
subject matter); Hester [Indus., Inc. v. Stein, Inc.], 142 F.3d
[1472,] 1482 [(Fed. Cir. 1998)] (explaining that “unmistakable
assertions made to the Patent Office in support of patentability”
“can give rise to a surrender for purposes of the recapture
rule”).
MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1314
(Fed. Cir. 2010).

ANALYSIS
We find that Appellants’ argument of November 27, 2006, (FF 3) is
directed to the “location of the heater” and that the Examiner clearly
recognized this on the record on May 3, 2007, by stating that claims 5, 9,
and 14 contain allowable material in the form of “the heat generating means
being suspended between the belts” (FF 4). The “v-belts” were not included
in the Examiner’s statement as being required for allowability. To the
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contrary, on September 21, 2006, the Examiner stated that “v-belts” were
known in the prior art (FF 2).
Therefore, we conclude that an objective observer looking to the
record on May 3, 2007, would understand that allowable material existed
and did not include the “v-belts.” We further conclude that an objective
observer looking to the record subsequent to the above events would
understand that the Interview Summary (FF 5) and amendments in the
Notice of Allowance (FF 6) were directed to constructing claims directed to
the previously recognized allowable material.
We conclude that an objective observer looking to the record as a
whole would conclude that Appellants had surrendered every heater location
except the location of the heater or heat generating means being suspended
between the belts, but did not surrender all belts except “v-belts.”
We agree with Appellants’ contention.

CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claims 1-5 and 7-10 under 35 U.S.C. § 251 based on recapture.
(2) On this record, claims 1-5 and 7-10 have not been shown to be
unpatentable.

DECISION
The Examiner’s rejection of claims 1-5 and 7-10 is reversed.

REVERSED

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Application 12/378,967

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HAYES, SOLOWAY P.C.
175 CANAL STREET
MANCHESTER, NH 03101