Ex Parte Lifson et al

Board of Patent Appeals and Interferences

Oct 18, 2010

11397888 (B.P.A.I. Oct. 18, 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.
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.
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Application 11/397,888

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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).
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Application 11/397,888

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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.
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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.
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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.
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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.
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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
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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
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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
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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.
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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.
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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.

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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