Ex Parte Lifson et alDownload PDFBoard of Patent Appeals and InterferencesOct 18, 201011397888 (B.P.A.I. Oct. 18, 2010) Copy Citation 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. 11/397,888 04/04/2006 Alexander Lifson 10668; 60246-516 5942 26096 7590 10/18/2010 CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER NORMAN, MARC E ART UNIT PAPER NUMBER 3744 MAIL DATE DELIVERY MODE 10/18/2010 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 ALEXANDER LIFSON and MICHAEL F. TARAS ____________ Appeal 2010-011457 Application 11/397,8881 Technology Center 3700 ____________ Before JENNIFER D. BAHR, KEN B. BARRETT, and FRED A. SILVERBERG, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL2 1 Application for reissue of U.S. Pat. No. 6,966,192 B2 (hereinafter “the patent”), iss. Nov. 22, 2005, on Application 10/712,682, filed Nov. 13, 2003 (“application for patent”). 2 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. Appeal 2010-011457 Application 11/397,888 2 STATEMENT OF THE CASE Alexander Lifson and Michael F. Taras (Appellants) originally appealed under 35 U.S.C. § 134 (2002) from the Examiner’s decision finally rejecting claims 1-7 and 13-24 under 35 U.S.C. § 251 as being an improper recapture of broadened subject matter surrendered in the application for patent upon which the present reissue application is based;3 and claims 1-7 and 13-24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. The Examiner subsequently withdrew the rejection under 35 U.S.C. § 112, first paragraph, as to claims 1-7, but maintained “[e]very ground of rejection set forth in the [Final Rejection] from which the appeal is taken . . . except for the grounds of rejection (if any) listed under the subheading ‘WITHDRAWN REJECTIONS.’” Ans. 2, 3. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). The Invention Appellants’ claimed invention is directed to “a shutoff valve placed on a connecting discharge line downstream of a compressor operating in a tandem compressor arrangement.” Col. 1, ll. 7-9.4 SUMMARY OF DECISION We AFFIRM. 3 This was a new ground of rejection entered in the Examiner’s Answer (Ans. 4-5). 4 References to column and line numbers in this opinion are to U.S. Pat. 6,966,192 B2 (the patent). Appeal 2010-011457 Application 11/397,888 3 OPINION Rejection under 35 U.S.C. § 251 – recapture Issue As stated by our reviewing court in North Am. Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005), “[u]nder the recapture rule, a patentee is precluded ‘from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims.’” (citations omitted). The basis of the Examiner’s rejection is that the subject matter of claim 1, as amended in this reissue application, as well as claims 2-7 and 13- 15, which depend from claim 1, is an improper recapture of broadened claimed subject matter surrendered in the application for patent. Ans. 5. Specifically, the Examiner concluded that Appellants’ amendment of claim 1 in this reissue application deleting the language “and have an open shutoff valve” constitutes recapture of subject matter surrendered in the application for patent, because this limitation was added to independent claim 1 in the application for patent for the purpose of overcoming a rejection of claim 1. Id. The Examiner also concluded that “[s]ince claims 16-24 are directed to a system/method that positively recite the second of the at least two tandem compressors having no shut off valve . . ., they are also directed to subject matter that was surrendered during prosecution of the patent.” Ans. 7. Appeal 2010-011457 Application 11/397,888 4 Apparently relying on a now out-dated version of the Manual of Patent Examining Procedure (MPEP) § 1412.02(d)5, Appellants argue that since “[t]he bulk of the limitations added to obtain allowance of claim 1 in the original prosecution remain in the reissue claim 1,” there is no recapture. Reply Br. 2. Appellants do not argue claims 2-7 and 13-24 separately from claim 1. Thus, we select claim 1 as representative, with claims 2-7 and 13- 24 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Accordingly, an issue joined in this appeal is whether reissue application claim 1 is directed to subject matter surrendered in the original prosecution of the patent in an effort to obtain allowance of the original claims. More specifically, is the presence in reissue application claim 1 of the broadened version of the limitation added to obtain allowance of claim 1 sufficient to avoid the recapture rule? Facts Pertinent to the Issue Pertinent Prosecution History Application for Patent: In an Office Action mailed March 11, 2005, the examiner of the application for patent rejected claims 1, 6, and 7 under 35 U.S.C. § 102(b) as being anticipated by Shaw (US 4,179,248); claims 2-4 under 35 U.S.C. § 103(a) as being unpatentable over Shaw in view of Official Notice; claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Shaw and Kiyokawa (US 6,446,462 B1); claims 1 and 7-9 under 35 U.S.C. § 102(b) as being anticipated by Amata (US 5,049,598); claims 2-4, 6, 10, 11, and 16 under 35 5 MPEP § 1412.02 – I.C.2(d) (8th Ed., Rev. 7, Jul. 2008) now instructs examiners that under the facts recited on page 2 of Appellants’ Reply Brief, a reissue application claim directed to ABCbroadened should be rejected as recapture. Appeal 2010-011457 Application 11/397,888 5 U.S.C. § 103(a) as being unpatentable over Amata and Shaw; and claims 12- 15 under 35 U.S.C. § 103(a) as being unpatentable over Amata, Shaw, and Kiyokawa. In an Amendment submitted April 25, 2005, in response to the rejection in the Office Action mailed March 11, 2005, Appellants amended independent claim 1 as follows:6 1. A refrigerant cycle comprising: at least two tandem compressors, said tandem compressors having outlets communicating with discharge fluid flow lines, and merging downstream of housing shells for said tandem compressors; a first heat exchanger downstream of a merger point for said discharge fluid flow lines, an expansion device between said first heat exchanger, and a second heat exchanger upstream of said tandem compressors; and a shutoff valve mounted on at least one of said discharge fluid flow lines communicating said discharge of said at least one compressor to said merger point, a control being operable to shutdown at least one of said tandem compressors, said shutoff valve blocking flow from the other of said tandem compressors to said at least one compressor, when said at least one compressor is shutdown, said shutoff valve being electrically controlled by said control, and said control being programmed to selectively actuate said shutoff valve associated with one of said tandem compressors while allowing the other of said tandem compressors to continue to run and have an open shutoff valve. In the Remarks accompanying the Amendment submitted April 25, 2005, Appellants stated: Applicant has amended this application as shown above. In particular, applicant has added the control step that on certain 6 Underlining denotes text inserted by the Amendment. Appeal 2010-011457 Application 11/397,888 6 occasions, one of the tandem compressors will be driven while the other not driven. The shutoff valve associated with the not- driven compressor will be closed. Nothing within the Shaw reference discloses any time when its valves 66 will be utilized. In fact, the Shaw reference would appear to require constant operation of both compressors, or neither. The main thrust of the Shaw patent is to have an oil equalization system. To achieve this goal, it would appear that both compressors would have to operate simultaneously. If one of the compressors had a higher oil level to be distributed, and that compressor is shut down, there would be no way to redistribute the oil among the running compressors. The shutdown compressor's casing would be at suction pressure, and the check valves on the line connected to this compressor would be shut. Moreover, and in particular as relates to the amendments to the claims, nothing within this reference indicates a control that would selectively actuate one but not the other of the compressors. In response to the Amendment submitted submitted April 25, 2005, the examiner issued a Notice of Allowability, mailed July 27, 2005, without further comment. Reissue application: In the present reissue application, reissue application claim 1 is amended as follows:7 1. A refrigerant cycle comprising: at least two tandem compressors, said tandem compressors having outlets communicating with discharge fluid flow lines, and merging downstream of housing shells for said tandem compressors; a first heat exchanger downstream of a merger point for said discharge fluid flow lines, an expansion device between 7 Strikethrough indicates text that has been deleted from the patent claim. Appeal 2010-011457 Application 11/397,888 7 said first heat exchanger, and a second heat exchanger upstream of said tandem compressors; and a shutoff valve mounted on at least one of said discharge fluid flow lines communicating said discharge of said at least one compressor to said merger point, a control being operable to shutdown at least one of said tandem compressors, said shutoff valve blocking flow from the other of said tandem compressors to said at least one compressor, when said at least one compressor is shutdown, said shutoff valve being electrically controlled by said control, and said control being programmed to selectively actuate said shutoff valve associated with one of said tandem compressors while allowing the other of said tandem compressors to continue to run and have an open shutoff valve. Appellants’ Reissue Application Declaration, submitted July 18, 2008, on page 2, states: The error in this application was when the claims were rejected over prior art, applicant amended the claims only to focus on the use of electrically controlled valves. In fact, the structure of the system wherein only one of the compressors is provided with a shutoff valve, and that that compressor is utilized as a primary compressor was not claimed. This was an error. The reissue claims are broader in that they do not require there be an electronically controlled valve on each line, but rather, they require that one line not have a shutoff valve and the other does. Certain other of the dependent claims require that the compressor without the shutoff valve is utilized as a primary compressor with the others being utilized selectively to supplement this one. Discussion Application of the recapture rule is a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue Appeal 2010-011457 Application 11/397,888 8 claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. North Am. Container, 415 F.3d at 1349. Step 1: A comparison of reissue application claim 1 and patent claim 1 reveals that reissue application claim 1 is broader in scope than patent claim 1, in that the limitation “and have an open shutoff valve” has been deleted from the claim. Indeed, Appellants do not dispute that reissue application claim 1 is broader than patent claim 1 in this respect. Step 2: The language “said shutoff valve being electrically controlled by said control, and said control being programmed to selectively actuate said shutoff valve associated with one of said tandem compressors while allowing the other of said tandem compressors to continue to run and have an open shutoff valve” was added to claim 1 in the Amendment submitted April 25, 2005, in response to prior art rejections, including a rejection as being anticipated by Shaw. The Remarks accompanying that Amendment clearly indicate that this language was added to claim 1 in order to overcome the rejection based on Shaw. In other words, Appellants added this language to claim 1 in an effort to obtain allowance of original patent claim 1. The limitation added to obtain allowance of claim 1 was a control programmed to selectively actuate the shutoff valve associated with one of the compressors while allowing the other compressor to run with an open shutoff valve. By deleting the language “and have an open shutoff valve” Appellants broadened this control limitation. Thus, the broadening aspect of Appeal 2010-011457 Application 11/397,888 9 reissue application claim 1 relates to subject matter surrendered in the original prosecution. Step 3: Reissue application claim 1 has not been narrowed in any respect relative to patent claim 1. Accordingly, it is clear that Appellants have not avoided the recapture rule by materially narrowing claim 1 in other respects. Appellants’ argument that “[t]he bulk of the limitations added to obtain allowance of claim 1 in the original prosecution remain in the reissue claim 1” (see Reply Br. 2) is irrelevant to the issue of whether the reissue claims violate the rule against recapture. See North Am. Container, 415 F.3d at 1350 (stating “that the reissue claims, looked at as a whole, may be of ‘intermediate scope’ is irrelevant. . . . the recapture rule is applied on a limitation-by-limitation basis”). Appellant’s deletion of “and have an open shutoff valve” from reissue application claim 1 clearly broadened the added control limitation, thus violating the rule against recapture. We sustain the rejection of claim 1, and claims 2-7 and 13-24, which fall with claim 1, under 35 U.S.C. § 251. Rejection under 35 U.S.C. § 112, first paragraph The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. This Appeal 2010-011457 Application 11/397,888 10 inquiry is a question of fact. Id. (citing Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)). In contesting this rejection, Appellants do not present any arguments directed to claims 13-15 and 17-24 separate from those asserted in favor of claim 16. Thus, we select claim 16 as representative, with claims 13-15 and 17-24 standing or falling with claim 16. 37 C.F.R. § 41.37(c)(1)(vii). The basis of the Examiner’s rejection is that the limitation in claim 168 that the second of said at least two tandem compressors has no shutoff valve is not supported in the original disclosure of the application for patent. Ans. 4. Appellants, implicitly conceding that no explicit description, in haec verba, is found in the disclosure of the patent,9 attempt to rely on the patent’s disclosure that “it is within the teachings of this invention that only one of the two lines be provided with a check valve” (col. 2, ll. 45-47) as providing the necessary support. App. Br. 4. According to Appellants, the claim terminology “shutoff” valve is broader terminology which encompasses at least both check valves and electronically controlled valves. Id. Thus, Appellants urge that the limitation to a “shutoff valve” in only one of the two lines in claim 16 is a broader recitation supported by the more specific description in the patent Specification of the use of a “check valve” in only one of the lines. Id. Appellants assert that “even though the original specification only pointed to the use of a check valve on one of the two 8 Claims 14-24 were added in the present reissue application, and claim 13 was amended to depend from claim 14. 9 Indeed, Appellants attempt to remediate such deficiency by a preliminary amendment, filed Apr. 4, 2006, with the reissue application, adding a new Figure 3, depicting an embodiment with only one shutoff valve 44, and new paragraphs in the Specification describing the depicted embodiment. Appeal 2010-011457 Application 11/397,888 11 lines, it is clear from the overall disclosure that this would extend to any type of shut-off valve on only one of the two lines.” App. Br. 5. Thus, the issue presented by Appellants is whether the disclosure in the Specification10 of the patent of using a check valve on only one of the two lines would have conveyed to a person of ordinary skill in the art that Appellants were in possession at the time the application for patent was filed of a refrigerant cycle as claimed in which only one of the two lines has a shutoff valve. The patent Specification states: While it is desired that both lines 30 and 28 have a shutoff valve, it is within the teachings of this invention that only one of the two lines be provided with a check valve, since in many occasions, a specific compressor(s) is(are) dedicated for part- load operation while the other one(s) is(are) being shutdown. Col. 2, ll. 44-49. We find that the patent Specification distinguishes between “check valves,” which include valves that “will resist flow somewhat” but “may be inherently leaky” (col. 2, l. 35-36), and “shutoff valves,” which are characterized as ensuring that “[t]here will be no leakage losses through the line” (col. 2, ll. 56-57) and as being “leak-tight” (col. 2, l. 61). Further, the patent Specification discloses that the “shutoff valve, for example, may be a controlled solenoid valve, or may be a very fluid-tight check valve or any other type of valve” (col. 2, l. 66 to col. 3, l. 1; emphasis added). On the basis of these disclosures, we find that the patent Specification would have conveyed to those of ordinary skill in the art that a “shutoff 10 The Specification of the application for patent was not amended during prosecution. Thus the patent Specification reflects the Specification as submitted on the filing date of the application for patent. Appeal 2010-011457 Application 11/397,888 12 valve,” as that terminology is used in the patent, possesses a degree of fluid- tightness not exhibited by all check valves. Thus, while some check valves, i.e., very fluid-tight check valves, may be sufficiently fluid-tight to serve as a “shutoff valve,” not every “check valve” necessarily is a “shutoff valve.” Therefore, the disclosure of the application for patent belies Appellants’ position that the claim terminology “shutoff valve” is broader terminology which encompasses at least both check valves and electronically controlled valves. Further, in accordance with the Specification, not all shutoff valves are check valves. Consequently, the disclosure in the patent Specification that “[w]hile it is desired that both lines 30 and 28 have a shutoff valve, it is within the teachings of this invention that only one of the two lines be provided with a check valve” is not a specific or narrow disclosure of providing only one of the two lines with a shutoff valve. To the contrary, that language conveys only that both lines desirably have a shutoff valve; however, both lines need not also have a check valve. For the above reasons, we find that the disclosure in the Specification of the patent of using a check valve on only one of the two lines would not have conveyed to a person of ordinary skill in the art that Appellants were in possession at the time the application for patent was filed of a refrigerant cycle as claimed in which only one of the two lines has a shutoff valve. Accordingly, we sustain the Examiner’s rejection of claim 16, as well as clams 13-15 and 17-23, which fall with claim 16, under 35 U.S.C. § 112, first paragraph. Appeal 2010-011457 Application 11/397,888 13 DECISION The Examiner’s decision is affirmed. 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). AFFIRMED mls CARLSON, GASKEY & OLDS, P.C. 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 Copy with citationCopy as parenthetical citation