Ex Parte Krueger

Board of Patent Appeals and Interferences

Apr 16, 2012

12356660 (B.P.A.I. Apr. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte ROBERT L. KRUEGER
________________

Appeal 2012-001425
Application 12/356,660
Patent US 7,360,846 B2
Technology Center 3600
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Before STEVEN D.A. McCARTHY, MICHAEL C. ASTORINO and
MICHAEL L. HOELTER, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

The Appellant1 seeks reissue of Krueger (US 7,360,846 B2, issued 1
Apr. 22, 2008)(“Krueger `846”). Krueger issued from Application Serial 2
No. 11/157,296 (the “`296 application”), filed June 21, 2005. In a Decision 3
on Appeal mailed February 1, 2012 (“Decision”), the Board affirmed the 4
Examiner’s decision rejecting claims 30-43 and 59 under 35 U.S.C. § 251 as 5

1 The real party in interest is the Appellant, Robert L. Krueger.
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being an improper recapture of broadened claimed subject matter 1
surrendered in the '296 application. The Appellant seeks rehearing. We 2
have jurisdiction under 35 U.S.C. § 6(b). 3
We grant rehearing to the extent that we have considered the 4
Appellant’s arguments in the Request for Rehearing under 37 C.F.R. § 41.52 5
filed April 2, 2012 (“Request”). In addition, we vacate the last sentence of 6
Finding of Fact (“FF”) 20 on page 9 of the Decision as well as footnote 5 on 7
pages 16-17 of the Decision. 2 Otherwise, we deny the Appellant’s request 8
for rehearing. 9
In the Request, the Appellant contends that we misapprehended or 10
overlooked three points: 11
First, that we erred in finding that it “is at least partially 12
due to the hydrophobic properties of the Appellant’s preferred 13

2 FF 20 should now read:
20. Second, the Appellant distinguished Heffernan’s teaching to
use balancing material comprising a mixture of atomized metal, glass beads,
vermiculite and silica gel from the Appellant’s teaching to use a single type
of balancing medium. (Id. 14-15). In making this argument, the Appellant
asserted that the subject matter of amended claim 1
reduces the need for multiple types of beads as the
ceramic beads claimed by [the Appellant]
overcome the problems of the prior art which
require the use of multiple types of materials (i.e.
[the Appellant’s] balancing materials are less
corrosive, withstand clumping in humidity, durable
in extreme temperatures; Heffernan teaches using
vermiculite as a portioning agent, silica gel as a
desiccant; and glass beads as the balancing agent).
(Id 14-15).
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material that the balancing material is less corrosive and able to 1
withstand clumping in humidity.” (Request 7-10). 2
Second, that we misapprehended the holding of In re 3
Mostafazadeh, 643 F.3d 1353 (Fed. Cir. 2011) and failed to 4
apply relevant precedent in Hester Indus., Inc. v. Stein, Inc. 142 5
F.3d 1472 (Fed. Cir. 1998) and B.E. Meyers & Co. v. United 6
States, 56 USPQ2d 1110 (Ct. Fed. Cls. 2000). (Request 10-12). 7
Third, that we erred in reading the preamble of claim 1 of 8
the original patent into the body of the claim when analyzing 9
whether appealed claim 30 is so wholly unrelated to the subject 10
matter of claim 1 that the recapture rule is not triggered. 11
(Request 12). 12
13
First Point 14
The Appellant argues that the Board erred in finding that it “is at least 15
partially due to the hydrophobic properties of the Appellant’s preferred 16
material that the balancing material is less corrosive and able to withstand 17
clumping in humidity.” (Decision 9 (FF 20)). This finding relies, in part, on 18
the Appellant’s admissions at column 3, lines 17-29 of the Appellant’s 19
original patent. The Appellant’s counsel now asserts that the passage of the 20
original patent relied on in making the finding was itself inaccurate and 21
proposes to seek to revise that passage if prosecution is reopened. (Request 22
8). This assertion calls into question whether the Appellant subjectively 23
believed that his arguments related or pertained to the advantages 24
contributed by the hydrophobicity of the balancing material. Since our 25
decision sustaining the rejection of claims 30-43 and 59 was not dependent 26
on this finding, we vacate the last sentence of Finding of Fact (“FF”) 20 on 27
page 9 of the Decision as well as footnote 5 on pages 16-17 of the Decision 28
in the interest of accuracy and in order to narrow the issues if prosecution is 29
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reopened. We express no opinion concerning the propriety of the 1
Appellant’s proposed revision to column 3, lines 17-29 of the Specification. 2
3
Second Point 4
Mostafazadeh states a three-step test for implementing this rule: 5
The first step is to “determine whether and in what 6
‘aspect’ the reissue claims are broader than the 7
patent claims.” 8
Id. at 1358 (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997). 9
Next, the court must “determine whether the 10
broader aspects of the reissue claims relate to 11
surrendered subject matter.” 12
Id. (quoting Clement at 1468-69). 13
In [the] final step, the court must “determine 14
whether the surrendered subject matter has crept 15
into the reissue claim.” 16
Id. (quoting Clement at 1469). 17
Hester does not state an “overlooked invention” rule independent of 18
the third step of the three-step test implementing the recapture rule as set 19
forth in Mostafazadeh and Clement. Hester states that: 20
Finally, because the recapture rule may be 21
avoided in some circumstances, we consider 22
whether the reissue claims were materially 23
narrowed in other respects. See, e.g., Mentor, 998 24
F.2d at 996, 27 USPQ2d at 1525 (“Reissue claims 25
that are broader in certain respects and narrower in 26
others may avoid the effect of the recapture rule.”); 27
Clement, 131 F.3d at 1470, 45 USPQ2d at 1165. 28
For example, in Ball the recapture rule was 29
avoided because the reissue claims were 30
sufficiently narrowed (described by the court as 31
fundamental narrowness”) despite the broadened 32
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aspects of the claims. [Ball,] 729 F.2d at 1438, 1
221 USPQ at 296. In the context of a surrender by 2
way of argument, this principle, in appropriate 3
cases, may operate to overcome the recapture rule 4
when the reissue claims are materially narrower in 5
other overlooked aspects of the invention. The 6
purpose of this exception to the recapture rule is to 7
allow the patentee to obtain through reissue a 8
scope of protection to which he is rightfully 9
entitled for such overlooked aspects. 10
Hester, 142 F.3d 1482-83. 11
The first sentence and the citation from the quoted passage refer to the 12
third step of the three-step test, that is, the exception to the third step by 13
which “[v]iolation of the rule against recapture may be avoided . . . if the 14
reissue claims ‘materially narrow’ the claims relative to the original claims 15
such that full or substantial recapture of the subject matter surrendered 16
during prosecution is avoided.” Mostafazadeh at 1358. Hence, when the 17
court stated that, in “the context of a surrender by way of argument, this 18
principle, in appropriate cases, may operate to overcome the recapture rule 19
when the reissue claims are materially narrower in other overlooked aspects 20
of the invention,” Hester, 142 F.3d 1482-83 (emphasis added), the 21
“principle” of which the court spoke is the third step of the test 22
implementing the recapture rule. The sentence from Hester quoted in the 23
previous sentence states a possible effect of the principle and not the 24
principle itself. Hester did not establish an exception to the recapture rule 25
independent of the third step of the three-step test. 26
In its discussion of the third rule of the three-step test, the court in 27
Mostafazadeh emphasized that “the recapture rule is violated when a 28
limitation added during prosecution is eliminated entirely, even if other 29
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narrowing limitations are added to the claim.” Id. at 1361. The Appellant 1
amended claim 1 during the prosecution of the '296 application to add the 2
limitation “wherein the container has a removable resilient clip on the 3
container at a location on the container spaced axially between the open end 4
of the container and an adhesive, and at least as far from the open end as the 5
adhesive.” That amendment overcame a rejection of claim 1 under 35 6
U.S.C. § 103(a). (See FF 21-23). The appealed reissue claims seek to 7
entirely eliminate that limitation. Even assuming for purposes of this appeal 8
only that the Appellant subjectively overlooked the possibility that the use of 9
hydrophobic ceramic beads in a method of balancing a wheel assembly 10
might have been a separate invention, the recitation of the step of “method 11
of balancing a wheel assembly” in appealed claim 30 does not except claim 12
30 from the recapture rule.3 13
The court in B.E. Meyers sought to apply the three-step test set forth 14
by our reviewing court. Id. at 1115. The court in B.E. Meyers did not 15
purport to apply an “overlooked invention” rule or other exception 16
independent of the three-step test. 17

3 Even if Hester were read to establish an independent exception to the
recapture rule, that exception would not apply to the facts of this appeal.
Hester states that, in “the context of a surrender by way of argument, this
principle, in appropriate cases, may operate to overcome the recapture rule
when the reissue claims are materially narrower in other overlooked aspects
of the invention.” Id, 142 F.3d 1482-83 (italics added). The Appellant
indicated an intent to surrender the subject matter added by amendment to
claim 1 by amending the claim. (See FF 21-23). This appeal does not arise
in the context of a surrender by way of argument only. Since the Appellant
does not seek reissue in the context of a surrender by way of argument, any
independent exception established by Hester would not apply within the
facts of this appeal.

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The reasoning of B.E. Meyers does not suggest a persuasive reason for 1
excepting appealed claim 30 from the recapture rule. At first glance, B.E. 2
Meyers appears to provide an example of a case, cited in MPEP 3
§ 1412.02(I)(C), illustrating when the subject matter of the reissue claim 4
might provide an invention separate from the subject matter surrendered 5
during prosecution. After more careful review, however, it is less clear that 6
B.E. Meyers is consistent with the precedent of our reviewing court. 7
In B.E. Meyers, the parties agreed that the first step of the test was 8
satisfied, that is, that the plaintiff broadened the claims of the original 9
Meyers patent (US 4,707,995, issued Nov. 17, 1987) in the Meyers (US RE 10
33,572, issued Apr. 16, 1991) (the “Meyers reissue patent”). Id. The court 11
itself stated that the “dispute concerns whether the broader aspects of the 12
reissue claim attempt to recapture subject matter surrendered during the 13
prosecution of the original patent.” Id. 14
Claim 1 of the original Meyers patent claimed: 15
1. An invisible light beam projector, 16
comprising: a tubular body having a forward end 17
and a rearward end; 18
an invisible light beam emitting diode 19
having an emitting lens; 20
mounting means inside of said tubular body 21
mounting the diode at a location 22
within the body, between the two ends 23
of the body, with the lens of the diode 24
directed towards the forward end of 25
the body; 26
control circuit means for the diode adapted 27
to be repetitiously charged and 28
discharged, and on each discharge 29
causing the diode to light and transmit 30
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a narrow beam of invisible light 1
through the emitting lens towards the 2
forward end of the tubular body said 3
control circuit means functioning to 4
turn diode on and off at a rate 5
resulting in the diode being on 6
between about 10-20% of the time 7
and off during the remainder of the 8
time, and when on being powered by 9
a current that is substantially larger 10
than the diode could stand if on 11
continuously; 12
projection lens means within the tubular 13
body, forwardly of the diode, of a 14
type which is always in focus in a 15
range between a predetermined 16
minimum distance from the light 17
projector and infinity, said projection 18
lens means being positioned and 19
adapted to receive the narrow beam of 20
invisible light from the diode lens and 21
enlarge and collimate this light into a 22
collimated beam of invisible light in 23
sharp focus, to produce a lighting spot 24
having a sharp and definite edge. 25
(The original Meyers patent, col. 6, l. 44 – col. 7, l. 5 (claim 1)). The 26
italicized text appears to correspond to the subject matter surrendered by 27
amendment during the prosecution of the patent which issued as the original 28
Meyers patent. B.E. Meyers at 1115. Claim 35 of the Meyers reissue patent 29
claimed: 30
35. A device for illuminating a target with 31
a beam of radiation in an invisible portion of the 32
electromagnetic spectrum to enhance the quality of 33
an image of a target produced by a passive visible 34
light intensifier and image enhancer, said device 35
comprising: a housing; a source of said 36
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electromagnetic radiation in said housing; and a 1
lens system in said housing and aligned with said 2
source for forming the energy emitted from said 3
source into a beam with a well defined peripheral 4
edge. 5
(The Meyers reissue patent, col. 11, ll. 7-15 (claim 35), quoted in B.E. 6
Meyers at 1116). 7
The court in B.E. Meyers based its reasoning on its conclusion that the 8
“subject matter protected in the new independent reissue claims dealt only 9
with the lens system; it had nothing to do with any type of pulsing circuit.” 10
B.E. Meyers at 1116. Claim 1 of the original Meyers patent claimed an 11
“invisible light beam projector.” The invisible light beam projector of claim 12
1 included “control circuit means for the diode adapted to be repetitiously 13
charged and discharged.” Claim 35 of the Meyers reissue patent claims a 14
“device for illuminating a target with a beam of radiation in an invisible 15
portion of the electromagnetic spectrum.” The device of claim 35 also 16
includes a “lens system.” Nevertheless, claim 1 of the original Meyers 17
patent did not claim a pulsing circuit any more than claim 35 of the Meyers 18
reissue patent claims a lens system. In other words, claim 35 of the Meyers 19
reissue patent does not “protect” a lens system any more than claim 1 of the 20
original Meyers patent protected a pulsing circuit. See Aro Mfg. Co. v. 21
Convertible Top Replacement Co., 365 U.S. 336, 339-40 (1961)(a claim 22
“protects” the claimed subject matter but not individually recited elements of 23
the claimed subject matter) . 24
The court in B.E. Meyers concluded that, “[d]uring the original patent 25
prosecution, the examiner made plaintiff aware that it could not receive 26
protection for its basic pulse circuit design because such pulsing circuitry 27
was already taught by the prior art. In this regard, nothing changed after the 28
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reissue process.” B.E. Meyers at 1116. Both claim 1 of the original Meyers 1
patent and claim 35 of the Meyers reissue patent were broad enough to 2
encompass an invisible light beam projector or a device including a control 3
circuit means for the diode adapted to be repetitiously charged and 4
discharged. What changed after the reissue process was that claim 35 was 5
sufficiently broad to include a device including any type of control or 6
pulsing circuit so long as the device included a lens system as defined in 7
claim 35. The scope of claim 35 encompassed devices including the pulsing 8
circuitry surrendered during the prosecution of the application which issued 9
as the original Meyers patent, again so long as the devices included lens 10
systems as defined in claim 35. 11
The reasoning of the court in B.E. Meyers is not persuasive because 12
the reasoning was based on errors of claim interpretation. In particular, that 13
reasoning does not persuade us that appealed claim 30 should be excepted 14
from the recapture rule. 15
16
Third Point 17
The Appellant has not cited any mandatory or persuasive authority 18
which might suggest excepting appealed claim 30 from the recapture rule. 19
In particular, the Appellant has not cited any mandatory or persuasive 20
authority which might suggest that the recitation in appealed claim 30 that 21
the balancing material comprises “a predetermined amount of hydrophobic 22
ceramic beads with continuously rounded surfaces” transforms the subject 23
matter of appealed claim 30 into an additional invention, embodiment or 24
species which does not trigger the recapture rule. In order to provide the 25
Appellant a full and clear explanation of our reasoning, we take this 26
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opportunity to expand on our statement on page 15, line 24 through page 16, 1
line 24 of the Decision. 2
In Mostafazadeh, our reviewing court observed of MPEP 3
§ 1412.02(I)(C) that: 4
This portion of the MPEP deals with claims in 5
which there is no need to apply the recapture rule 6
in the first place. The recapture rule is triggered 7
only where the reissue claims are broader than the 8
patented claims because the surrendered subject 9
matter has been reclaimed in whole or substantial 10
part (i.e., an added limitation has been eliminated 11
or revised). See Clement, 131 F.3d at 1468-69. In 12
contrast, this portion of the MPEP addresses 13
reissue claims directed at “additional 14
inventions/embodiments/species not originally 15
claimed.” Because the subject matter of these 16
claims was “not originally claimed,” it is wholly 17
unrelated to the subject matter that was 18
surrendered during prosecution and the recapture 19
rule is not even triggered. 20
Id. at 1360 (italics in original). 21
MPEP § 1412.02(I)(C) provides two examples to illustrate when “the 22
reissue claim(s) are really claiming additional inventions/embodiments 23
/species not originally claimed.” Id. The first example assumes that, 24
In the original prosecution of the patent, applicant 25
claimed a method of making a glass lens, where 26
the ion implantation step used a molten bath to 27
diffuse ions into the lens, and that step had to be 28
amended to recite a pressure of 50-60 PSI and a 29
temperature between 150-200 degrees C – to 30
define over the art. That pressure and temperature 31
range-set is “frozen” in place for any molten bath 32
ion implantation claim, and it cannot be deleted or 33
broadened by reissue. However, if in the original 34
application, applicant had failed to claim a 35
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disclosed embodiment to plasma ion implantation 1
(i.e., using a plasma stream rather than a molten 2
bath to provide the ions), that is a proper 35 U.S.C. 3
251 error, which can be corrected by reissue. 4
Applicant can, in a reissue application, add a set of 5
claims to plasma ion implantation, without 6
including the “50-60 PSI and temperature between 7
150-200 degrees C” limitation. The “50-60 PSI – 8
150-200 degrees C limitation” is totally irrelevant 9
to plasma implantation and is clearly wrong for the 10
plasma species/embodiment, as opposed to being 11
right for the molten bath species/embodiment. 12
(Id.) In other words, the claims recite plasma ion implantation and, by 13
implication, exclude methods including steps of molten bath implantation. 14
This first example does not suggest that appealed claim 30 should be 15
excepted from the recapture rule. In the matter before us, claim 1 of 16
Krueger `846 recites: 17
1. A method for treating a tire to balance 18
a wheel comprising the steps of: 19
providing a container with an opening at one 20
end and holding a quantity of [ceramic] balancing 21
material; 22
wherein the container has a removable 23
resilient clip on the container at a location on the 24
container spaced axially between the open end of 25
the container and an adhesive, and at least as far 26
from the open end as the adhesive; 27
temporarily closing the ends of the 28
container; 29
inserting the temporarily closed container 30
into a tire; 31
mounting the tire on a wheel; and 32
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impacting the wheel to open the container 1
and thereby release the balancing material into the 2
inside of the tire. 3
Appealed claim 30 recites in part: 4
A method of balancing a wheel assembly 5
comprising the steps of: 6
disposing a balancing material comprising a 7
predetermined amount of hydrophobic ceramic 8
beads with continuously rounded surfaces in a 9
cavity formed by a tire and wheel, . . . . 10
The first five recited steps in the body of claim 1 of the original patent 11
recite a particular technique for “disposing a balancing material comprising 12
a predetermined amount of . . . ceramic beads . . . in a cavity formed by a tire 13
and wheel.” This is true regardless whether the ceramic beads are 14
hydrophobic ceramic beads with continuously rounded surfaces. As the 15
Appellant points out, ceramic bead balancing material may be disposed in 16
the cavity formed by a tire and wheel by means of method steps other than 17
the first five method steps of claim 1, such as by inserting the balancing 18
material through a valve stem after the tire is mounted on the wheel. (See 19
App. Br. 8). Nevertheless, as the Examiner correctly concludes (see, e.g., 20
Ans. 10), the Appellant has not limited appealed claim 30 to a method in 21
which the balancing material is inserted through the valve stem. 22
Consequently, the Appellant has not limited appealed claim 30 so as to 23
exclude disposing the ceramic balancing material in the cavity formed by a 24
tire and wheel by means of the first five method steps of claim 1 in the same 25
manner that the reissue claim of the example excludes a method using 26
molten bath implantation by reciting plasma ion implantation. The first 27
example provided by MPEP § 1412.02(I)(C) provides no basis for 28
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concluding that appealed claim 30 claims an additional invention, 1
embodiment or species different from that claimed by claim 1 of Krueger 2
`846. 3
The second example hypothesizes that: 4
if, in the original application, applicant failed to 5
claim the method of placing two lenses made by 6
the invention in a specified series to modulate a 7
laser for cutting chocolate, that too is a proper 35 8
U.S.C. 251 error, which can be corrected by 9
reissue. In this lens placement method, it does not 10
matter how the specific lens having the implanted 11
ion gradient was made, and the “50-60 PSI and 12
temperature between 150-200 degrees C” 13
limitation is again not relevant. 14
MPEP § 1412.02(I)(C). In this example, the surrendered subject matter 15
relates to a method for making the lenses. The reissue claims relate to a 16
method of use. The two methods have different intended uses. Furthermore, 17
the steps for making the lenses used in the method of cutting chocolate limit 18
the method of cutting chocolate only to the extent that those steps affect the 19
structure and characteristics of the lenses. 20
Appealed claim 30 claims a “new method of balancing a wheel 21
assembly.” Claim 1 of Krueger `648 claims a “method of treating a tire to 22
balance a wheel.” Nothing in the preambles of the two claims suggests a 23
distinction between the two methods comparable to the distinction between a 24
method for making a lens and a method of using the lens. Furthermore, the 25
first five recited steps in the body of claim 1 of the original patent recite a 26
particular technique for “disposing a balancing material comprising a 27
predetermined amount of . . . ceramic beads . . . in a cavity formed by a tire 28
and wheel” as recited in appealed claim 30. To this extent, the methods 29
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recited in the two claims overlap. To reiterate, the Appellant has not 1
identified a distinction between the methods of appealed claim 30 and claim 2
1 of Krueger `648 comparable to the distinction between a method of 3
making a lens and a method of using the lens to cut chocolate. The second 4
example provided by MPEP § 1412.02(I)(C) provides no basis for 5
concluding that appealed claim 30 claims an additional invention, 6
embodiment or species different from that claimed by claim1 of Krueger 7
`846. 8
Therefore, the Examiner correctly concluded that the limitation of the 9
“ceramic balancing material” recited in claim 1 as allowed in the '296 10
application (see FF 17 and 23) to “hydrophobic ceramic beads with 11
continuously rounded surfaces,” in the context of the claims as a whole, does 12
not result in a different invention, embodiment or species. (See Ans. 10). 13
The Appellant has not identified any error in the Examiner’s 14
conclusion that claim 30 and its dependent claims are barred by the 15
recapture rule. We continue to sustain the rejection of claims 30-43 and 59 16
under 35 U.S.C. § 251 as being an improper recapture of broadened claims 17
subject matter surrendered in the '296 application. 18
19
DECISION 20
We grant rehearing to the extent that we have considered the 21
Appellant’s arguments in the Request. In addition, we vacate the last 22
sentence of Finding of Fact (“FF”) 20 on page 9 of the Decision as well as 23
footnote 5 on pages 16-17 of the Decision. Otherwise, we deny rehearing.24
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a). 2
3
DENIED 4
5
Klh 6