Ex Parte Severinsson

Board of Patent Appeals and Interferences

May 19, 2010

09710962 (B.P.A.I. May. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARS SEVERINSSON
____________

Appeal 2008-005060
Application 09/710,962
Patent 5,833,035
Technology Center 3600
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Decided: May 19, 2010
____________

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 APPEAL
Appeal 2008-005060
Application 09/710,962
Patent 5,833,035

STATEMENT OF THE CASE
Lars Severinsson (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s final Office action of September 14, 2007 in reissue
application 09/710,962. The reissue application seeks to reissue U.S. Patent
5,833,035, issued November 10, 1998 (“the ‘035 Patent”) from application
08/817,769, filed April 27, 1997 (“the ‘769 Application”). The reissue
application contains claims 29-32, all of which have been rejected by the
Examiner. Claims 1-28 have been canceled. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant’s claimed invention is a disc brake caliper. ‘035 Patent,
col. 1, l. 5. Claim 29, reproduced below, is representative of the subject
matter on appeal.
29. A disc brake caliper system comprising a disc brake caliper
including
a housing (1) to be arranged astraddle of a vehicle brake
disc,
two thrust sleeves (8), which are connected to a brake
pad holder (6) provided with a brake pad (5) for braking
engagement with the brake disc and which are axially movable
in the housing at a distance from each other,
a cross bar (9) connecting the two thrust sleeves, and

1 The real party in interest identified in the Brief is Haldex Brake Products
AB of Landskrona, Sweden. Br. 2.
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a lever (17) for transmitting a brake force from a brake
cylinder (4) attached to the disc brake caliper, to the cross bar,
characterized in that a mechanism including at least the
thrust sleeves (8), the cross bar (9) and the lever (17) is held
together as a unit in the absence of the housing (1)
and further characterized in that bearing tappets (20),
parallel with the cross bar (9), are fixedly connected to the
inside of the disc brake caliper and in that the lever (17),
besides an arm (18) for actuation by the brake cylinder (4),
comprises a curved wedge (19), having an inner cylindrical
surface (19') in engagement with outer cylindrical surfaces of
the bearing tappets and an outer cylindrical surface (19") -- with
greater radius than the inner cylindrical surface -- in
engagement with an inner cylindrical surface of the cross bar.
THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 29-32
under 35 U.S.C. § 251 as being an improper recapture of broadened claimed
subject matter surrendered in the application for the patent upon which the
present reissue is based.
ISSUE
The Examiner found that reissue claim 29 is broadened because it
omits the limitation of the cover as a part of a self sustained unit in a brake
mechanism and further found that during prosecution of the application that
led to the patent now in reissue: (1) the claims included “two thrust
sleeves (8) … arranged on the cover for disposal in the housing”; (2) the
Specification described the cover and the rest of the mechanism held
together as a unit, (3) Appellant identified the novel feature of the claimed
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invention as “the housing and cover members…structured with the entire
braking unit carried by the cover independently from the housing to be
inserted as a unit”, and (4) Appellant presented arguments during
prosecution of a prior reissue application of the ‘035 Patent that the cover
was a necessary limitation to distinguish over the prior art. Ans. 3-6.
Appellant agrees that the reissue claims on appeal are broader than the
patented claims because the reissue claims do not require a cover. Br. 8.
Appellant contends that “the cover does not relate to surrendered subject
matter, as the cover itself was not added and no arguments about the
presence of the cover itself were made in an effort to overcome a prior art
rejection.” Id. Rather, Appellant contends that Appellant consistently
argued for patentability on the basis that the brake mechanism is “held
together as a unit” and that any statements made during prosecution
concerning the cover were “merely incidental.” Br. 9-10. Appellant adds
that the presence of the cover could not have been relied upon for
patentability since the prior art clearly disclosed a brake system having a
housing and a cover. Br. 10. Thus, Appellant argues that the recapture
rejection fails part two of the In re Clement three-part test.
The issue presented by this appeal is:
Does the broader aspect of reissue claims 29-32, viz. the absence of a
limitation that the two thrust sleeves are arranged on the cover for disposal
in the housing, relate to subject matter surrendered in the original
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prosecution of the ‘035 Patent, such that the reissue claims are barred by the
rule against recapture?
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Appellant filed the ‘769 Application on April 27, 1997 including
prosecution claims 1-11, of which claim 1 was the sole
independent claim.
2. Prosecution claim 1 as originally filed recited:
1. A disc brake caliper, comprising a housing (1) to be
arranged astraddle of a vehicle brake disc, a cover (2)
attached to the housing, two thrust sleeves (8), which are
connected to a brake pad holder (6) provided with a
brake pad (5) for braking engagement with the brake disc
and which are axially movable in the housing at a
distance from each other, a cross bar (9) connecting the
two thrust sleeves, and a lever (17) for transmitting a
brake force from a brake cylinder (4), attached to the
caliper, to the cross bar, characterized in that bearing
tappets (20), parallel with the cross bar (9), are fixedly
connected to the inside of the cover (2) and in that the
lever (17), besides an arm (18) for actuation by the brake
cylinder (4), comprises a curved wedge (19), having an
inner cylindrical surface (19′) in engagement with outer
cylindrical surfaces of the bearing tappets and an outer
cylindrical surface (19") - with greater radius than the
inner cylindrical surface - in engagement with an inner
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cylindrical surface in the cross bar.
3. The Examiner issued an Office action on November 14, 1997
rejecting claims 1-4, 7, 10, and 11 and objecting to claims 5, 6, 8,
and 9. The Examiner rejected claim 7 under 35 U.S.C. § 112,
second paragraph, as being indefinite, and rejected claims 1-4, 10,
and 11 under 35 U.S.C. § 102(e) as being anticipated by US Patent
5,433,298 to Antony.
4. Appellant filed a Response to the Office Action on January 29,
1998 in which Appellant amended prosecution claim 1 as follows:
1. (Amended) [A] An interconnected disc brake caliper
assembly ready for insertion into [comprising] a housing
(1), comprising in combination: housing structure for
straddling [to be arranged astraddle of] a vehicle brake
disc, a cover (2) [attached] for attachment to the housing
substantially parallel to the brake disc carrying said
assembly which further comprises two thrust sleeves (8),
which are [connected] connectable to a brake pad holder
(6) provided with a brake pad (5) for braking engagement
with the brake disc and which sleeves are axially
movable and arranged on the cover for disposal in the
housing at a distance from each other, a cross bar (9)
[connecting] encompassing the two thrust sleeves, and a
lever (17) for transmitting a brake force from a brake
cylinder (4) to said crossbar, when attached to the caliper
assembly, [to the cross bar, characterized in that] bearing
tappets (20) [,] arranged parallel with the cross bar (9) [,
are] fixedly connected to the inside of the cover (2) and
wherein [in that] the lever (17) [, besides] comprises an
arm (18) for actuation by the brake cylinder (4) [,
comprises] and a curved wedge (19) [,] having an inner
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cylindrical surface (19′) in engagement with outer
cylindrical surfaces of the bearing tappets and an outer
cylindrical surface (19") [-] with greater radius than the
inner cylindrical surface [-] in engagement with an
[inner] inwardly directed cylindrical surface in the cross
bar.
Response to Office Action, dated Jan. 29, 1998 pp. 1-2.
5. In response to the rejection of claim 1 as anticipated by Antony,
the Appellant stated:
Parent claim 1 is amended to better structurally
define applicant’s novel feature wherein the housing and
cover members are structured with the entire braking unit
carried by the cover independently from the housing
(page 3, lines 22-26) to be inserted as a unit.
Thus, to overcome the 35 USC 102 rejection the
claimed structure is now more distinctly defined over
Antony, et al., which discloses no such modular unit.
Response to Office Action, dated Jan. 29, 1998, pp. 6-7.
6. Subsequent to the Response, the Examiner and Appellant held an
Examiner Interview during which the Appellant agreed to correct
certain § 112 issues in the claims. Interview Summary, dated May
27, 1998.
7. The Examiner then issued a Notice of Allowance, which included
an Examiner amendment of some of the claims, including an
amendment to prosecution claim 1 as shown below:
1. (Twice Amended) An interconnected disc brake
caliper assembly ready for attachment to a brake cylinder
(4) [insertion into a housing (1)], comprising in
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combination: a housing [structure] for straddling a
vehicle brake disc, a cover (2) attached [for attachment]
to the housing substantially parallel to the brake disc
[carrying said assembly] which further comprises two
thrust sleeves (8), which are connectable to a brake pad
holder (6) provided with a brake pad (5) for braking
engagement with the brake disc and which sleeves are
axially movable and arranged on the cover for disposal in
the housing at a distance from each other, a cross bar (9)
encompassing the two thrust sleeves, and a lever (17) for
transmitting a brake force from a brake cylinder (4) to
said crossbar, [when attached to the caliper assembly,]
bearing tappets (20) arranged parallel with the cross bar
(9) fixedly connected to the inside of the cover (2) and
wherein the lever (17) comprises an arm (18) for
actuation by the brake cylinder (4) and a curved wedge
(19) having an inner cylindrical surface (19′) in
engagement with outer cylindrical surfaces of the bearing
tappets and an outer cylindrical surface (19") with greater
radius than the inner cylindrical surface in engagement
with an inwardly directed cylindrical surface in the cross
bar.
Notice of Allowability, dated May 27, 1998, p. 2.
8. The UPSTO then issued the ‘035 Patent from the ‘769 Application
on November 10, 1998.
9. Appellant’s Specification refers to the cover and braking
mechanism, in combination, as “a unit”:
The cover and the cross bar may according to the
invention be resiliently connected by means of screws
extending through holes in the cross bar and attached to
the cover, a compression spring being arranged between
the head of each screw and a spring sleeve bearing
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Patent 5,833,035

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against the cross bar.
By this design a return force for the cross bar and
accordingly for the thrust sleeves is obtained, but the
cover and the rest of the mechanism are also held
together as a unit even in the absence of the housing,
which accordingly may be manufactured separately.
‘035 Patent, col. 2, ll. 23-32 (emphasis added).
10. Appellant’s Specification does not describe the braking mechanism
alone being capable of being held together as a unit in the absence
of the housing.
PRINCIPLES OF LAW
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee
surrendered in an effort to obtain allowance of claims in the patent sought to
be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
The Federal Circuit’s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of “whether and in what ‘aspect’ any
claims sought to be reissued are broader than the patent claims.” 131 F.3d at
1468. The Federal Circuit reasoned that a reissue application claim deleting
a limitation or element from a patent claim is broader as to that limitation’s
or element’s aspect. Id.
Step 2 involves a determination of “whether the broader aspects of the
reissue [application] claims relate to surrendered subject matter.” 131 F.3d
at 1468-69. In this respect, review of arguments and/or amendments during
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Patent 5,833,035

10
the prosecution history of the application, which matured into the patent
sought to be reissued, is appropriate. In reviewing the prosecution history,
the Federal Circuit observed that “[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.” 131 F.3d at 1469. See also Hester Indus. v.
Stein, Inc., 142 F.3d 1472, 1481 (Fed. Cir. 1998) (“an amendment to
overcome a prior art rejection evidences an admission that the claim was not
patentable” (citations omitted)).
Step 3 of the Clement test is applied when the broadening relates to
surrendered subject matter and involves a determination whether the
surrendered subject matter has crept into the reissue application claim. 131
F.3d at 1469.
As to the second part of the Clement test, the Federal Circuit recently
stated:
[A] patentee is only entitled to a reissue patent for broader
claims when the patentee claimed “less than he had a right to
claim in the patent” through “error without any deceptive
intent [],” not through deliberate amendments or arguments
designed to convince an examiner to allow the claims.
35 U.S.C. § 251; see also Medtronic, Inc. v. Guidant Corp., 465
F.3d 1360, 1372–73 (Fed. Cir. 2006) (“[T]he deliberate
surrender of a claim to certain subject matter during the original
prosecution of the application for a patent ‘made in an effort to
overcome a prior art rejection’ is not such ‘error’ as will allow
the patentee to recapture that subject matter in a reissue.”
(quoting Clement, 131 F.3d at 1468–69)); Haliczer v. United
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11
States, [ ] 356 F.2d 541, 545 ([Ct. Cl. ]1966) (“[D]eliberate
withdrawal or amendment of claims . . . to obtain a patent
cannot be said to involve the inadvertence or mistake
contemplated by 35 U.S.C. § 251, and is not an error of the kind
which will justify the granting of a reissue patent which
includes the matter withdrawn.”). Moreover, the court prohibits
recapture based on principles of equity. An applicant’s
surrender of subject matter places “competitors and the public
. . . on notice . . . and may have [caused them] to rely on the
consequent limitations on claim scope.” MBO, 474 F.3d at
1331; see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d
1379, 1384 (Fed. Cir. 1998) (“[T]he ‘recapture rule’ ...
ensur[es] the ability of the public to rely on a patent’s public
record.”); Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 993
(Fed. Cir. 1993) (“[T]he reissue statute cannot be construed in
such a way that competitors, properly relying on prosecution
history, become patent infringers when they do so.”).
MBO Labs., Inc. v. Becton, Dickinson & Co., No. 2008-1288, 2010 WL
1427547, at *5 (Fed. Cir. Apr. 12, 2010).
To determine whether a patentee surrendered subject matter, we
ask “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.” Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323
(Fed. Cir. 2006). If the patentee surrendered by argument, he
must clearly and unmistakably argue that his invention does not
cover certain subject matter to overcome an examiner’s
rejection based on prior art.
Id. at *6 (citations omitted).
ANALYSIS
In this case, Appellant does not dispute the Examiner’s analysis as to
the first and third steps of the recapture analysis. The Examiner found that
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12
claim 29 omits claiming the cover as a part of a self sustained unit in a brake
mechanism. Ans. 3. Appellant agrees that reissue claims 29-32 are broader
than the claims in the ‘035 Patent because the reissue claims do not require a
cover. Br. 8. The question before us is whether an objective observer
viewing the prosecution history would conclude that the purpose of the
patentee’s amendment and argument during the original prosecution was to
overcome prior art and secure the patent such that the Appellant surrendered
a disc brake caliper assembly in which the thrust sleeves are not required to
be arranged on the cover as a unit.
An objective observer looking at the prosecution history would see
that Appellant amended the original prosecution claims to add the limitation
that the two thrust sleeves are arranged on the cover for disposal in the
housing in order to overcome an anticipation rejection based on Antony
(Facts 1-4). The objective observer would further see that Appellant argued
that the prosecution claims, as amended, distinguished the claimed invention
from the brake disc caliper of Antony, because the claimed invention
required the entire braking unit to be carried by the cover independently
from the housing so that the modular cover and braking unit assembly could
be inserted into the housing as a unit (Fact 5). The objective observer would
surmise that the Examiner relied on this claim amendment and argument to
allow the claimed disc brake caliper over the prior art (Facts 6-8). The
objective observer would also see from reading Appellant’s Specification,
that Appellant described the modular “unit” as including both the cover and
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13
the braking mechanism and that the Specification does not describe the
braking mechanism alone being capable of being held together as a unit in
the absence of the housing (Facts 9 and 10). As such, we find that an
objective observer viewing the prosecution history would conclude that the
purpose of Appellant’s amendment and argument during the original
prosecution was to overcome prior art and secure the patent such that the
Appellant surrendered a disc brake caliper assembly in which the thrust
sleeves are not required to be arranged on the cover as a unit. In other
words, Appellant surrendered a brake disc caliper including a brake
mechanism that can be held together as a unit without the inclusion of a
cover.
The Appellant argues that there was no deliberate surrender during the
original prosecution, arguing that “[l]ike the applicant in Medtronic [v.
Guidant Corp., 465 F.3d 1360 (Fed. Cir. 2006)], the present Applicant’s
statements made during prosecution concerning the cover were merely
incidental.” Br. 10. We see no analogy between the facts in Medtronic and
the facts before us in the present appeal.
In Medtronic, the court held that while certain claims at issue covered
an “unconditional embodiment” as filed, and were amended so that they no
longer covered that embodiment2, there was no deliberate surrender of
subject matter to obtain allowance of the claims. Id. at 1375. The court

2 In Medtronic, there was no prior art rejection, or any rejection at all, of the
pertinent claims and the claims were amended in an examiner’s amendment
to make “minor wording changes.” 465 F.3d at 1374-75.
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14
based this holding on substantial evidence showing that neither the examiner
nor the prosecuting attorney considered the original claims to cover the
unconditional embodiment, and thus there was no deliberate surrender of the
unconditional embodiment by the amendments made during prosecution. Id.
The court found that “[t]he fact that [the prosecuting attorney] thought the
claims were directed to the conditional embodiment alone is demonstrated
by his correspondence with the inventor and with the examiner.” Id. The
court further found that “[t]he fact that the examiner thought that the claim
was to the conditional embodiment alone is demonstrated by the examiner’s
amendment he made to add ‘minor wording changes.’” Id.
The facts before us are different from those before the court in
Medtronic in several significant respects. In Medtronic, the examiner made
some “minor wording changes” to the claims that, unbeknownst to the
examiner or prosecuting attorney, narrowed the claims to exclude an
unconditional embodiment, whereas in this case, Appellant made deliberate
amendments to the claims in response to a prior art rejection (Facts 3-5).
Specifically, original prosecution claim 1 simply recited “a cover” as one
component of the disc brake caliper, and Appellant amended this claim, in
response to the prior art rejection, to recite “[a]n interconnected disc brake
caliper assembly” and added that the “two thrust sleeves (8), … are arranged
on the cover for disposal in the housing” (Fact 4). Further, the
correspondence between the prosecuting attorney and the Examiner in this
case evinces a deliberate surrender of subject matter, unlike in Medtronic
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Patent 5,833,035

15
where no such correspondence existed. In particular, the Appellant in this
case specifically argued that the amended claim distinguished over the prior
art because it recited a cover and a braking unit that could be inserted into
the housing as a modular unit (Fact 5). Appellant has not presented us with
any persuasive objective evidence to rebut the strong suggestion from the
prosecution history that Appellant’s claim amendments and arguments were
made to overcome the prior art rejection and thus acted as a surrender of
subject matter.
Appellant argued that the presence of the cover could not have been
asserted to contribute to patentability because “the prior art clearly disclosed
a brake system having a housing and a cover.” Br. 10. A similar argument
was recently discounted by our reviewing court. See MBO, 2010 WL
1427547, at *8. In MBO, MBO argued that it did not surrender a guard body
moving forward to cover a fixed needle because its references to a
retractable needle were not an attempt to overcome prior art or persuade the
examiner to allow its claims based on retraction, but were merely a
concession that the prior art disclosed a retractable needle. Id. at *8. The
Federal Circuit noted that even if the retractable needle was known in prior
art, the fact that MBO relied on it to distinguish over other prior art still
amounts to surrender:
MBO misunderstands the rationale behind the rule against
recapture. The fact that some of the prior art may have
disclosed a retractable needle cannot save MBO’s reliance on
its retractable needle to distinguish other prior art. “The
public’s reliance interest provides a justification for the
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16
recapture rule that is independent of the likelihood that the
surrendered territory was already covered by prior art or
otherwise unpatentable.” MBO [Labs., Inc. v. Becton,
Dickinson & Co.], 474 F.3d [1323,] 1332 [(Fed. Cir. 2007)].
Id. As such, we find that Appellant surrendered the subject matter that
Appellant is now trying to reclaim in reissue claims 29-32.
CONCLUSION
The broader aspect of reissue claims 29-32, viz. the absence of a
limitation that the two thrust sleeves are arranged on the cover for disposal
in the housing, relates to subject matter surrendered in the original
prosecution of the ‘035 Patent, such that the reissue claims are barred by the
rule against recapture.
DECISION
The decision of the Examiner to reject claims 29-32 is AFFIRMED.

No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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