Ex Parte Nada

Board of Patent Appeals and Interferences

Oct 14, 2010

10977627 (B.P.A.I. Oct. 14, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MITSUHIRO NADA
____________

Appeal 2010-011219
Application 10/977,627
Patent 6,493,618 B2
Technology Center 3600
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
and LINDA E. HORNER and KEN B. BARRETT, Administrative Patent
Judges.

HORNER, 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.
Appeal 2010-011219
Application 10/977,627
Patent 6,493,618 B2

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STATEMENT OF THE CASE
Mitsuhiro Nada (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 52-74 in reissue application
10/977,627. This reissue application seeks to reissue U.S. Patent 6,493,618
B2, issued December 10, 2002, based on Application 09/790,617, filed
February 23, 2001. The reissue application contains claims 1-74. Claims
1-51 stand allowed. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
THE INVENTION
Appellant’s claimed invention is directed to a vehicle control
technique performed when some of the vehicle sensors have developed a
fault. ‘618 Patent, col. 1, ll. 7-10. Claim 52, reproduced below, is
representative of the subject matter on appeal.
52. A control device for controlling a prescribed
control object using first and second sensors configured to
provide a control input, the control device comprising:
a fault detector configured to detect that one of the first
and second sensors has developed a fault by analyzing temporal
variation patterns of outputs of the first and second sensors
when the outputs of the first and second sensors remain within
respective normal output ranges thereof, the fault detector
detecting a faulty sensor by determining whether the temporal
variation pattern output by each sensor corresponds to one of a
plurality of preset fault patterns that represent mutually different
fault events; and
a control input setting section configured to determine the
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control input using an output of a normal sensor other than the
faulty sensor when the faulty sensor has been detected by the
fault detector,
the control input setting section dividing a full range of
output signal levels of the normal sensor into a plurality of
regions in which the control input changes at different rates of
change,
the control input setting section determining a change in
the control input depending on which of the plurality of regions
contains the output signal level of the normal sensor.
THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 52-74
under 35 U.S.C. § 251 as being an improper recapture of subject matter
surrendered in the application for the patent upon which the present reissue
is based.
ISSUES
The Examiner determined that claims 52-74 violate the rule against
recapture because (1) these claims fail to recite that the regions of the output
signal levels of the normal sensor include “an opening region in which the
accelerator control input increases at a first rate of change and a closing
region in which the accelerator control input decreases at a second rate of
change”, and (2) such feature was argued by Appellant during prosecution of
the application for the patent upon which the present reissue is based to
overcome a prior art rejection. Ans. 5-6.
Appellant argues that the above-mentioned feature was “not necessary
to distinguish over [the prior art] and was provided [in Appellant’s
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arguments] only as an example of the broad-based distinction that was
necessary to distinguish over [the prior art]” and thus “Appellant did not
clearly and unmistakably surrender subject matter between his ‘example’
and his broader argument.” App. Br. 21. Appellant further argues that
claims 66-68, which depend from the original, unamended patent claims, are
narrower than the original patent claims, and thus cannot be rejected for
recapture. App. Br. 26.
The issues presented by this appeal are:
Do the broader aspects of claims 52-65 and 69-74, which omit the
requirement that the regions of the output signal levels of the normal sensor
include “an opening region in which the accelerator control input increases
at a first rate of change, and a closing region in which the accelerator control
input decreases at a second rate of change”, relate to subject matter
surrendered by arguments made during prosecution of the application for the
patent upon which the present reissue is based?
Do reissue claims 66, 67, and 68, which depend from original patent
claims 1, 18, and 35, respectively, improperly recapture subject matter
surrendered in the application for the patent upon which the present reissue
is based?
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Patent 6,493,618 B2

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellant filed application 09/790,617 on February 23, 2001 (“the
‘617 application”) containing claims 1-51.
2. In a non-final Office Action, dated April 10, 2002, the Examiner
rejected claims 1-51 under 35 U.S.C. § 102(e) as being anticipated
by U.S. Patent 6,116,214 to Ishida, issued September 12, 2000.
3. Appellant’s representative then conducted an interview with the
Examiner at which claims 1, 18, and 35 and the prior art to Ishida
were discussed. Examiner Interview Summary, dated June 5,
2002.
4. The Examiner’s summary of the substance of the interview stated,
in part:
Applicant’s representative argues that [Ishida] does not
disclose the limitations of the claims as stated “dividing
a full range of output signal levels of the normal sensor
into a plurality of regions including an opening region in
which the accelerator control input increases at a first
rate of change, and a closing region in which the
accelerator control input decreases at a second rate of
change.”
Examiner Interview Summary at 3.
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5. Appellant thereafter submitted a response to the office action and
interview summary, in which Appellant argued:
According to Ishida, a sensor output signal from a
normal sensor is subjected to delay processing and
limited to a guard value, but changes of the sensor output
signal will be nevertheless reflected to the throttle
opening in all range of the sensor output signal.
Contrarily, according to the claimed invention, the
full range of the sensor output signal is divided into a
plurality of regions, and the change rate of the
accelerator control input is determined depending on
which of the plurality of regions contains the output
signal level of the normal sensor. For example, the
accelerator control input for the presently claimed
invention increases when the output signal level of the
normal sensor is present in the opening region, and it
decreases when the output level signal level of the
normal sensor is present in the closing region, wherein
the first and second rates are not necessarily different
and they may have an identical value. These features are
not disclosed or suggested by Ishida.
Thus, Ishida does not disclose or suggest “the
accelerator control input setting section dividing a full
range of output signal levels of the normal sensor into a
plurality of regions including an opening region in which
the accelerator control input increases at a first range of
change, and a closing region in which the accelerator
control input decreases at a second rate of change, the
accelerator control input setting section determining a
change in the accelerator control input depending on
which of the plurality of regions contains the output
signal level of the normal sensor,” as recited in claims 1,
18 and 35.
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Request for Reconsideration at 1-2.
6. Appellant did not amend claims 1-51 in response to the office
action. Request for Reconsideration at 1-2.
7. The Examiner thereafter issued a Notice of Allowance, and the
‘617 application issued as U.S. Patent 6,493,618 B2 on December
10, 2002.
PRINCIPLES OF LAW
The Federal Circuit has described application of the recapture rule as
“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 claims were materially narrowed in other respects, so
that the claims may not have been enlarged, and hence avoid the
recapture rule.
No. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349
(Fed. Cir. 2005) (citing Pannu v. Storz Instruments, Inc., 258 F.3d 1366,
1371 (Fed. Cir. 2001)).
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. … Thus, if the objective public observer can
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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).
A surrender can occur by argument as well as by
amendment. Hester [Indus., Inc. v. Stein, Inc.], 142 F.3d [1472,]
1480-84 [(Fed. Cir. 1998)] (noting the statement in Clement that
“‘[t]o determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for arguments
and changes to the claims made in an effort to overcome a prior
art rejection’ ” (quoting [In re] Clement, 131 F.3d [1464,] 1469
[(Fed. Cir. 1997)]) (emphasis added in Hester, 142 F.3d at
1480)). We stated in Hester that, like prosecution history
estoppel, “unmistakable assertions made to the Patent Office in
support of patentability” “can give rise to a surrender for
purposes of the recapture rule.” Id. at 1482.
Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006).
ANALYSIS
Claims 52-65 and 69-74
Upon review of the arguments submitted by Appellant during
prosecution of the ‘617 application, we conclude that these arguments did
not amount to an unmistakable assertion in support of patentability that
would give rise to surrender of the subject matter now being claimed in
claims 52-65 and 69-74.
While we acknowledge that this is a close case, the crux of
Appellant’s argument made during the ‘617 application to overcome the
anticipation rejection based on Ishida was that Ishida does not disclose that
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the full range of the sensor output signal is divided into a plurality of
regions, and the change rate of the accelerator control input is determined
depending on which of the plurality of regions contains the output signal
level of the normal sensor. Fact 5. In particular, Appellant contrasted this
feature of the claim with the control system of Ishida in which “a sensor
output signal from a normal sensor is subjected to delay processing and
limited to a guard value, but changes of the sensor output signal will be
nevertheless reflected to the throttle opening in all range[s] of the sensor
output signal” (emphasis added). Fact 5. As such, we find that a person
having ordinary skill in the art would understand Appellant to have argued
that the patentable distinction of the claimed control device over the control
device of Ishida is that the claimed control device divides the full range of
the sensor output signal into a plurality of regions and uses these regions to
determine the change rate of the accelerator control input.
While Appellant’s arguments provided an example of one way of
determining the accelerator control input using the claimed regions, we find
that a person having ordinary skill in the art would understand this example
to be merely illustrative of the claimed invention and not as being necessary
to distinguish the claimed invention from Ishida.
While the Appellant’s arguments end with a conclusory paragraph in
which Appellant recited the language from the entire claim accelerator
control input limitation, we find that a person having ordinary skill in the art,
reading this conclusory paragraph in light of the prior arguments made by
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Appellant, Appellant’s claims, and the disclosure of Ishida, would not
understand this paragraph to be an unmistakable assertion that the opening
and closing regions are the features that distinguish the claimed control
device from Ishida’s control device.
Finally, we note that Appellant in this instance did not amend the
claims in response to the rejection over Ishida to add the language now being
omitted from the reissue claims on appeal. Fact 6. This is an important
factor in our decision because “[d]eliberately canceling or amending a claim
in an effort to overcome a [prior art] reference strongly suggests that the
Applicant admits that the scope of the claim before cancellation or
amendment is unpatentable.” In re Clement, 131 F.3d 1464, 1469 (Fed. Cir.
1997). See also Hester Indus., 142 F.3d at 1481 (“an amendment to
overcome a prior art rejection evidences an admission that the claim was not
patentable”).
Each of the independent apparatus claims 52, 55, 57, 632, and 64
recites “the control input setting section dividing a full range of output signal
levels of the normal sensor into a plurality of regions in which the control
input changes at different rates of change, [and] the control input setting
section determining a change in the control input depending on which of the
plurality of regions contains the output signal level of the normal sensor.”

2 Claim 63 recites “the first or second sensor” in place of “the normal
sensor.”
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Each of the independent method claims 58, 61, and 653 similarly recites the
steps of “dividing a full range of output signal levels of the normal sensor
into a plurality of regions in which the control input changes at different
rates of change, and determining a change in the control input depending on
which of the plurality of regions contains the output signal level of the
normal sensor.” These were the same features argued by Appellant in the
‘617 application to overcome the rejection based on Ishida. Fact 5. As such,
reissue claims 52-65 and 69-74 do not impermissibly recapture surrendered
subject matter. Hence, we will reverse the rejection of claims 52-65 and 69-
74 under 35 U.S.C. § 251.
Claims 66-68
Claims 66, 67, and 68 depend from original, unamended claims 1, 18,
and 35, respectively. Each of these dependent claims, by virtue of its
dependency, includes the limitation of the accelerator control input setting
section dividing a full range of output signal levels of the normal sensor into
a plurality of regions include an opening region in which the accelerator
control input increases at a first rate of change, and a closing region in which
the accelerator control input decreases at a second rate of change. Thus,
these claims do not do not impermissibly recapture surrendered subject
matter. Hence, we will reverse the rejection of claims 66-68 under
35 U.S.C. § 251.

3 Claim 65 recites “the first or second sensor” in place of “the normal
sensor.”
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Patent 6,493,618 B2

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CONCLUSIONS
The broader aspects of claims 52-65 and 69-74, which omit the
requirement that the regions of the output signal levels of the normal sensor
include “an opening region in which the accelerator control input increases
at a first rate of change, and a closing region in which the accelerator control
input decreases at a second rate of change”, do not relate to subject matter
surrendered by arguments made during prosecution of the application for the
patent upon which the present reissue is based.
Reissue claims 66, 67, and 68, which depend from original patent
claims 1, 18, and 35, respectively, do not improperly recapture subject
matter surrendered in the application for the patent upon which the present
reissue is based.
DECISION
The decision of the Examiner to reject claims 52-74 is REVERSED.

REVERSED

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