Ex Parte Kim

Patent Trial and Appeal Board

May 7, 2014

11840940 (P.T.A.B. May. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte KYUNAM KIM
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Appeal 2013-009607
Application 11/840,940
Patent 6,910,186 B2
Technology Center 2100
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Before BRADLEY R. GARRIS, ALLEN R. MacDONALD, and
ROBERT E. NAPPI,1 Administrative Patent Judges.

Per Curiam.

Opinion Concurring filed by Administrative Patent Judge MacDONALD.

DECISION ON REQUEST FOR REHEARING
BACKGROUND
Appellant has filed a paper under 37 C.F.R. § 41.52 requesting that we
reconsider our Decision mailed January 24, 2014 where we affirmed the

1 The original panel consisted of Judges Garris, Nappi, and Spahn. Judge
Spahn is no longer available. Judge MacDonald replaces Judge Spahn on
the panel.
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rejections of claims 70 through 75, 77, and 79 through 94. We reconsider
our Decision in light of Appellant’s Request for Rehearing, but we decline to
change the Decision.

First issue:
Appellant contends that we applied the wrong legal standard to
determine whether the claims are directed to overlooked subject matter.
Req. Reh’g 2-9 and 16.2 Specifically, Appellant argues the standard wholly
unrelated to the claimed subject matter is not the proper standard to
determine overlooked subject matter. Req. Reh’g 3-4. Rather Appellant
asserts the proper standard is “the added limitations of the claim [are]
unrelated to the surrendered subject matter.” Req. Reh’g 4 (relying upon In
re Youman, 679 F.3d 1335, 1347-48 (Fed. Cir. 2012).
These arguments have not persuaded us we applied the wrong legal
standard. Appellant’s arguments are confusing the standard to determine
whether the reissue claims are directed to overlooked aspects of the
invention with the third step (whether the claims are materially narrowed) of
the analysis to determine whether the recapture rule has been violated. The
citations of In re Youman, relied upon in Appellant’s arguments are
discussing the third step of the recapture rule and not a discussion of the
overlooked subject matter. As stated in our January 24 2014 Decision:
With respect to “reissue claims directed at ‘additional
inventions/embodiments /species not originally claimed,’” our

2 Throughout this Decision we refer the Appeal Brief filed October 1, 2012,
Reply Brief, filed July 3, 2013, Examiner’s Answer mailed May 8, 2013,
and Request for Rehearing filed March 24, 2014.
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Application 11/840,940
Patent 6,910,186 B2
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reviewing court has said that “[b]ecause the subject matter of these
claims was ‘not originally claimed,’ it is wholly unrelated to the
subject matter that was surrendered during prosecution and the
recapture rule is not even triggered.” In re Mostafazadeh, 643 F.3d
1353, 1360 (Fed. Cir. 2011); see also In re Youman, 679 F.3d 1335,
1347 [(Fed. Cir. 2012)] (discussing overlooked aspects as being
limitations never claimed and thus never surrendered).

PTAB Decision mailed January 24, 2014, pages 5-6. Thus, Appellant’s
arguments have not persuaded us that our January 24, 2014 Decision applied
the wrong legal standard to determine whether the claims are directed to
overlooked subject matter.

Second Issue:
Appellant argues that there was no surrender of the contracting
limitation. Req. Reh’g 10-12. Further, Appellant argues that our Decision
in discussing the amendment to originally filed claim 47 (issued as claim 46)
raises a completely new issue as we found that the amendment to claim 47
leads to recapture. Req. Reh’g 10. Appellant argues that applying the
standards set forth in Medtronic, Inc. v. Guidant Corp. 465 F.3d 1360 (Fed.
Cir. 2006) demonstrates there is no surrender of the contracting limitations.
These arguments have not persuaded us of error in our January 24,
2014 Decision and they have not persuaded us that the Decision raised new
issues. Appellant argues on page 26 of the Brief that since patent claim 46
did not contain a contracting step there was no surrender. Further, the
Examiner identified, in the Answer, that during prosecution, originally filed
claim 47 (issued as claim 46), contained a limitation directed to contracting,
thus leading to surrender. Thus, we are not persuaded that our Decision
raised a new issue as both Appellant and the Examiner addressed the issue.
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Patent 6,910,186 B2
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Accordingly, we consider Appellant’s arguments relying upon the standards
set forth in Medtronic which were not raised in the Briefs, to be untimely
and waived. See 37 C.F.R. § 41.52(a)(1). Further, had these arguments
been timely they would not have been persuasive. First, Appellant does not
explain why the surrender of contracting subject matter (e.g., as evidenced
by patent claim 1) is somehow negated by the fact that patent claim 46 has
no contracting limitation (e.g., claim 46 may have a different limitation
evincing different surrendered subject matter). Second, we consider
Appellant’s arguments directed to the contracting limitation during
prosecution of application 09/732,628 (which issued as patent 6,910,186) to
demonstrate a deliberate withdrawal and amendment of the claims in order
to secure a patent. (See e.g. page 15 of the May 17, 2004 amendment). As
such a deliberate action is not the inadvertence or mistake that reissue is
meant to remedy, we conclude the actions led to a surrender. Medtronic,
465 F.3d at 1375.

Third issue:
On pages 13 through 15 of the Request for Rehearing Appellant
asserts that the reissue applications are materially narrowed in other aspects.
These assertions present additional arguments which were not raised in the
Briefs and as such are improper and waived under 37 C.F.R. § 41.52(a)(1).

Fourth issue:
Appellant argues that our Decision applied the wrong standard by
stating “[w]e are not persuaded.” Req. Reh’g 17. Appellant argues “[w]hile
Appellant has explained why it is legally entitled to reissue the current
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patent, it is not Appellant's burden to persuade the Patent Office of that legal
conclusion or why the Examiner is incorrect.” Req. Reh’g 17. This line of
reasoning has not convinced us that our prior Decision is in error. Our prior
Decision made clear that based upon Appellant’s arguments, we reviewed
and concurred with the Examiner’s legal conclusion as to why the Appellant
is not entitled to the current reissue claims. Filing an appeal to the Board
does not entitle the Applicant to a de novo review rather the Board’s review
is guided to issues raised by Appellant. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“[E]ven assuming that the examiner had failed to make a
prima facie case, the Board would not have erred in framing the issue as one
of ‘reversible error.’”). Accordingly, we are not persuaded that our January
24, 2014 Decision applied the wrong standard of review.

CONCLUSION
For the aforementioned reasons, Appellant’s contentions have not
persuaded us of error in our January 24, 2014 Decision.
Accordingly, while we have granted Appellant’s Request for
Rehearing to the extent that we have reconsidered our Decision, that request
is denied with respect to making any changes therein.
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).

REHEARING-DENIED

Appeal 2013-009607
Application 11/840,940
Patent 6,910,186 B2
6

MacDONALD, Administrative Patent Judge, concurring.

I agree fully with and join this panel’s per curiam decision. I write
separately to note my concern with certain of Appellant’s arguments, such
as, the argument that claim 91 is materially narrower in that it requires
“wherein said special character is in an image of said at least one of the
plurality of products that was sold” Req. Reh’g 14. The subject matter
presented in this limitation (content in the form of an image) relates to
“non-functional descriptive material,” which is generally not given
patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404
(Fed. Cir. 1983).3
I deem to be wholly without merit any of Appellant’s arguments that
such non-functional descriptive material can constitute a material narrowing
relative to the original claim as required by In re Mostafazadeh, 643 F.3d

3 The PTO may not disregard claim limitations comprised of printed matter.
See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also Diamond v. Diehr,
450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However, the Examiner need
not give patentable weight to descriptive material absent a new and
unobvious functional relationship between the descriptive material and the
substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035
(Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70 USPQ2d 1862, 1864
(Fed. Cir. 2004). See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI
2005) (informative) (“[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art.”), aff'd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); and Ex
parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative) (“Nonfunctional
descriptive material cannot render nonobvious an invention that would have
Footnote continued on next page.
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1353, 1358, 1359, 1361 (Fed. Cir. 2011). A limitation that is not given
patentable weight cannot materially narrow so as to avoid reissue recapture.

tj

otherwise been obvious.”), aff'd No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule
36).