Ex Parte Stout et al

Board of Patent Appeals and Interferences

Sep 15, 2009

10360603 (B.P.A.I. Sep. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GORDON STOUT, XUYEN PHAM, MICHAEL J. ROCCHIO,
KYLE A. NAYDO, DERRICK J. PARKS, and PATRICK REICH
____________

Appeal 2009-006492
Application 10/360,603
Patent 6,182,712
Technology Center 3700
____________

Decided: September 15, 2009
____________

Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
FRED E. MCKELVEY, Senior Administrative Patent Judge, and
LINDA E. HORNER, Administrative Patent Judge.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
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STATEMENT OF THE CASE
Gordon Stout et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of February 25, 2008 in reissue
application 10/360,603. The reissue application seeks to reissue U.S. Patent
6,182,712, issued February 6, 2001, based on Application 09/154,930, filed
September 17, 1998 (“the ‘712 patent”). The reissue application contains
claims 1-5, 7-42, 44-56, 58-62, 67-69, 71-73, 75-81, 83, and 84. The
Examiner has rejected claims 41, 42, 44-56, 58-62, 67-69, 71-73, 75-81, 83,
and 84, and has indicated claims 1-5 and 7-40 are allowable. Claims 6, 43,
57, 63-66, 70, 74, 82, and 85-88 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

THE INVENTION
The Appellants’ claimed invention is directed to a method and
apparatus for metered transport of fine powders. ‘712 patent, col. 1, ll. 15-
17. Representative Figures 1 and 3 are reproduced below.
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Figure 1 shows a cross-sectional side view of an apparatus for
transporting fine powders, and Figure 3 shows a more detailed view of a
chamber of the apparatus of Figure 1, showing a vibrating rod 28 being
translated over the chamber. ‘712 patent, col. 7, ll. 40-46. As shown in
Figure 1, apparatus 10 comprises a hopper 12 having a top end 14 and a
bottom end 16. At the bottom end 16 is an opening 18. The hopper 12
holds a bed of fine powder 20. Positioned below hopper 12 is a rotatable
member 22 having a plurality of chambers 24 about its periphery. Rotatable
member 22 is rotated to align chambers 24 with opening 18 to allow powder
20 to be transferred from hopper 12 into chambers 24. ‘712 patent, col. 9,
ll. 29-39.
A piezoelectric bending motor 26 having a rod 28 attached thereto is
positioned above hopper 12. A distal end of rod 28 is placed within the fine
powder bed 20. ‘712 patent, col. 9, ll. 40-44. Upon actuation of the
piezoelectric bending motor 26, rod 28 is caused to vibrate back and forth as
indicated by arrows 32. Motor 26 is also translatable along the length of
rotatable member 22. ‘712 patent, col. 9, ll. 53-58. While vibrating, rod 28
is translated over chamber 24, as indicated by arrow 34. ‘712 patent, col. 10,
ll. 8-9. As shown in Figure 3, a line 40 is in communication with chamber
24 to provide suction within chamber 24 during filling and compressed gas
when expelling the powder from chamber 24. ‘712 patent, col. 9, ll. 64-67.
In another embodiment, a vibrator, such as an ultrasonic horn, is configured
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to vibrate an element within the powder in an up and down motion. ‘712
patent, col. 13, ll. 1-4; fig. 11.
Independent reissue claims 41, 51, 56, 67, 76, and 81 on appeal read
as shown in Appendix 4 attached. The remaining dependent reissue claims
on appeal read as shown in the claims appendix of Appellants’ Appeal Brief,
filed July 28, 2008, and are not reproduced herein.

THE REJECTIONS
The Examiner relies upon the following evidence:
Parks US 5,826,633 Oct. 27, 1998
Kawaguchi FR 2 537 545 A1 Jun. 15, 1984
Maki JP 07-109031 A Apr. 25, 1995

The Appellants seek review of the following rejections:
1. The Examiner rejected reissue claims 51-55, 76, and 78-80 under
35 U.S.C. § 102(e) as being anticipated by Parks.
2. The Examiner rejected reissue claims 41, 42, 44-56, 58-62, 67-69,
71-73, 75-81, 83, and 84 under 35 U.S.C. § 103(a) as being
unpatentable over Kawaguchi and Maki.
3. The Examiner rejected reissue claims 41, 42, 44-56, 58-62, 67-69,
71-73, 75-81, 83, and 84 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.
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ANTICIPATION ISSUE
The Appellants argue that the Examiner erred in rejecting reissue
claim 51 as being anticipated by Parks, because Parks does not disclose a
method including providing an element within a hopper and moving the
element laterally through the hopper and across an opening in the hopper.
App. Br. 14. The Appellants argue that the Examiner erred in rejecting
claim 76 as being anticipated by Parks, because Parks does not disclose an
apparatus including a vibratable element that is translatable laterally across
an opening in the hopper. Id.
The Examiner found that Parks discloses a vibratable member 22
positionable within the hopper, a vibrator motor 26 to vibrate the vibratable
member 22, and a mechanism (38, 34) for translating the vibratable member
over the chamber. Ans. 7, 9-10.
The issue presented by this appeal includes:
Have the Appellants established that the Examiner erred in finding
that Parks discloses an element that is vibratable within a hopper and
translatable laterally across an opening in the hopper?

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).
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1. Parks discloses an apparatus 10 for metering and transporting unit
dosages of a fine powder medicament into receptacles 12, where
the apparatus 10 includes a sifter 18 for receiving the fine powder
and a sieve 22 “[t]ranslatably held within the sifter 18.” Parks,
col. 10, ll. 11-18; Fig. 1.
2. Parks discloses a motor 26 with a rotatable output shaft 36 having
a cam 38, which is received into an aperture in the proximal end 34
of a frame 32, to cause frame 32 and sieve 22 to translate back and
forth in an oscillating pattern. Parks, col. 10, ll. 29-40; Fig. 3.
3. The sieve 22 of Parks is not rigidly fixed to sifter 18, and is thus
capable of being vibrated within sifter 18. Parks, col. 10, ll. 16-18.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).
“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
claims. . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
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We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims “their broadest
reasonable interpretation consistent with the specification” and “in light of
the specification as it would be interpreted by one of ordinary skill in the
art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).
It is the appellants’ burden to precisely define the invention, not the
PTO’s. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Appellants
always have the opportunity to amend the claims during prosecution, and
broad interpretation by the examiner reduces the possibility that the claim,
once issued, will be interpreted more broadly than is justified. In re Prater,
415 F.2d 1393, 1404-05 (CCPA 1969). See In re Bigio, 381 F.3d 1320,
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1325 (Fed. Cir. 2004) (“Absent claim language carrying a narrow meaning,
the PTO should only limit the claim based on the specification or
prosecution history when those sources expressly disclaim the broader
definition.”).

ANALYSIS
The Appellants argued claims 51-55 as a first group and claims 76 and
78-80 as a second group. We select claim 51 as representative of the first
group and claim 76 as representative of the second group. Claims 52-55
stand or fall with claim 51, and claims 78-80 stand or fall with claim 76.
Claim 51 recites a method including the step of “providing an element
within the hopper and moving the element laterally through the hopper and
across the opening.” There is no requirement in method claim 51 that the
“element” is vibrated.
Claim 76 recites an apparatus including “a vibratable element within
the hopper, the vibratable element being translatable laterally across the
opening.” Although claim 76 recites that the element is “vibratable,” claim
76 does not recite an actuator or other mechanism for actually vibrating the
element. Thus, claim 76 requires only an element that is capable of being
vibrated.
The Examiner found that sifter 18 of Parks is the claimed “hopper”
having an opening 46, 58 therein and that sieve 22 of Parks meets the
“element” of claim 51. The Examiner further found that sieve 22 is
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provided within the sifter 18 and that it is translated back and forth laterally
through the sifter and across an opening thereof. Ans. 6-7, 9-10.
The Appellants contend the Examiner erred because “the sifter
mechanism [elements 34 and 38] is not within the hopper, it does not move
laterally through the hopper, and does not move laterally across an opening
in the hopper.” App. Br. 14. This argument mischaracterizes the
Examiner’s rejection. The Examiner found that sieve 22, not elements 34
and 38, are provided “within the hopper” and move “laterally through the
hopper and across the opening” as claimed. The Examiner cited to elements
(34, 38) as evidence of a mechanism in Parks for causing the sieve 22 to
move through the hopper and across the opening of the hopper. Ans. 7. We
agree with the Examiner’s findings, and we find that sieve 22 of Parks is
held within a hopper (sifter 18) and moves laterally through the hopper
(Facts 1 & 2).
The Appellants further argue that “[w]hile the small vibratory motion
of Parks et al may be in the same direction as the claimed lateral translation,
the movement is not ‘across an opening in the hopper’ as one of ordinary
skill in the art would understand the limitation after reading Appellant’s
specification.” App. Br. 14, Reply Br. 7-8. The Appellants contend that “a
person would not be said to have gone ‘across’ a street when all they have
done is stand in the middle of the street shaking.” Reply Br. 8.
Unfortunately, this is the sum total of the Appellants’ argument about the
“across the opening” limitation. The Appellants do not point us to any
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specific portion of Appellants’ Specification that would have made clear to
one having ordinary skill in the art how to interpret “across the opening” in
the claim. The Appellants also do not provide persuasive evidence from one
having ordinary skill in the art to demonstrate how such a person would have
understood “across the opening” as claimed in light of the Specification.
The Appellants fail to even provide us with a dictionary definition of the
word “across” or otherwise provide us with a meaning of the term that
would distinguish the claimed method from the translation motion disclosed
in Parks.
We find that the ordinary meaning of “across” includes (1) “On, at, or
from the other side of: across the street,” (2) “So as to cross; through: drew
lines across the paper,” (3) “From one side of to the other: a bridge across a
river,” and (4) “Into contact with: came across my old roommate.” The
American Heritage Dictionary of the English Language (4th ed. 2000). As
such, the ordinary meaning of “across” includes broadly moving through an
object so as to cross it, and does not necessitate full translation from one side
of the object to the other.
We have undertaken our own review of Appellants’ Specification and
do not find any definition or description of “across” an opening that would
exclude translation of a member back and forth within a hopper. For
example, the Appellants’ Specification describes the translation of rod 28 as
follows:
While vibrating, rod 28 is translated over chamber 24 as
indicated by arrow 34. In this way, agitation of the powder bed
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20 will occur over substantially the entire opening of the
chamber 24. Further, translation of rod 28 will also move rod
28 over other chambers so that they may be filled in a similar
manner.
‘712 patent, col. 10, ll. 8-13. Thus, the Appellants’ Specification describes
the translation of rod 28 as moving the rod over substantially the entire
opening of the chambers 24. As shown in Figure 1, the chambers 24 do not
span the entire width of the hopper 12 (see rightmost chamber 24 which lies
to the left of the edge of hopper 12). In order to translate the rod 28 over
substantially the entire opening of each of the chambers 24 shown in
Figure 1 would not require the rod 28 to be moved from the leftmost side of
the hopper to the rightmost side of the hopper.
The Appellants’ Specification describes rods 60 as being translated
“back and forth within hopper 54 while rods 60 are vibrating.” ‘712 patent,
col. 11, ll. 23-25; Figs. 4-6. The Appellants’ Specification also describes
that the vibratable element 210 “may be translated back and forth within
hopper 206.” ‘712 patent, col. 12, ll. 29-30; Fig. 10. Thus, one having
ordinary skill in the art would have understood “across the opening” of the
hopper to mean only that the element must be moved from one point on one
side of the opening to a point on the other side of the opening, and not across
the entire opening of the hopper. As such, we agree with the Examiner that
Parks discloses an element (sieve 22) that moves laterally across the opening
of the hopper as called for in claim 51 (Fact 2). We further find that Parks’s
element (sieve 22) is translatable laterally across the opening of the hopper
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(sifter 18) as called for in claim 76 (Fact 2). We further find that sieve 22 of
Parks is a “vibratable element,” as called for in claim 76, because it is not
rigidly fixed to sifter 18 and is thus capable of being vibrated (Fact 3). Thus,
the Appellants have not persuaded us that the Examiner erred in finding that
Parks anticipates claims 51-55, 76, and 78-80.

OBVIOUSNESS ISSUE
The Examiner found that Kawaguchi discloses an apparatus for
transporting a fine powder that includes a hopper 5 and a stirrer 6
positionable within the hopper so that the distal end is near the opening, and
a motor to rotate the stirrer to agitate the fine powder. Ans. 8. The
Examiner found that the stirrer 6 of Kawaguchi is being moved laterally
through the hopper 5 and across the opening of the hopper as the distal end
of the stirrer 6 rotates in the hopper. Ans. 10-11. The Examiner further
found that Maki discloses an analogous apparatus that includes an agitation
system comprising an ultrasonic horn (15, 16) which vibrates a vibratable
element 14 in an up and down motion at a frequency in the range from about
50 Hz to about 1,000 Hz or about 1,000 Hz to about 180,000 Hz. Id. The
Examiner concluded that it would have been obvious to replace
Kawaguchi’s agitation system with the agitation system of Maki since doing
so involves mere substitution of one functional equivalent powder agitation
system for another and either of these systems would perform equally well
in the Kawaguchi device. Ans. 8-9.
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The Appellants argue the Examiner erred in rejecting reissue claims
41, 67, and 81 as being unpatentable over Kawaguchi and Maki, because
neither reference discloses or suggests an element that is vibrated in an up
and down motion. App. Br. 15, 17. The Appellants argue the Examiner
erred in rejecting reissue claims 51 and 76 as being unpatentable over
Kawaguchi and Maki, because neither reference discloses or suggests an
element with the hopper that is moved laterally through the hopper and
across the opening. App. Br. 16, 18.
The issues presented by this appeal include:
Have the Appellants established that the Examiner erred in finding
that Maki discloses an element that is vibrated in an up and down motion?
Have the Appellants established that the Examiner erred in finding
that Kawaguchi discloses an element that is moved laterally through the
hopper and across the opening?

ADDITIONAL FINDINGS OF FACT
4. Maki discloses an apparatus 11 having a vibration-enhancing horn
16 and an ultrasonic vibrator 15 connected to a vibration-
transmitting rod 14 passing through a feeding pipe 13, and a
vibrating plate 17 fixed to the tip of rod 14, pressed against the
feeding pipe 13, and provided with a plurality of fine holes 21.
Maki 3, para. 0004, figs. 5, 6. Maki discloses that the vibrating
plate 17 is vibrated by ultrasonic vibrations to fluidize particulate
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material 12 on the vibrating plate 17 and discharge it uniformly
through the fine holes 21. Id.
5. Maki does not expressly disclose that the vibration-transmitting
rod 14 and/or the vibrating plate 17 are vibrated in an up and down
motion.
6. An ordinary meaning of “lateral” is “of, relating to, or situated at
or on the side.” The American Heritage Dictionary of the English
Language (4th ed. 2000).
7. Kawaguchi discloses an apparatus having a rotating vane 6
mounted to rotate within duct 5 to feed granular material P through
duct 5. Kawaguchi 6; figs 1, 2.
8. Kawaguchi discloses that the vane 6 rotates in duct 5, but it does
not disclose that the vane 6 moves laterally within the duct 5.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Independent reissue claims 41 and 56 call for vibrating an element
within the hopper in an up and down motion. Independent reissue claims 67
and 81 call for an actuator to vibrate a vibratable element in an up and down
motion. The Examiner found that Maki discloses an ultrasonic horn (15, 16)
which vibrates a vibratable element (14) in an up and down motion. Ans. 8.
We agree with the Appellants that the Examiner erred in making this
finding. See App. Br. 15 (Appellants argue that “Maki does not explicitly
discuss the direction of vibration and the drawings appear to show a side-to-
side vibration”); see also App. Br. 17, 19.
We find that Maki does not expressly disclose that rod 14 or plate 17
is vibrated in an up and down motion (Fact 5). Further, we find that Maki
discloses, and shows in Figure 5, that the plate 17 is fixed to the tip of rod 14
and that the plate is pressed against the bottom opening of feeding pipe 13,
so that it does not appear that up and down vibration of the plate 17 or rod
14 would be possible (Fact 4). As such, we find that the Examiner erred in
finding the Maki discloses an ultrasonic horn that vibrates an element in an
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up and down motion within the hopper, as called for in claims 41, 56, 67,
and 81. Because the Examiner’s conclusion of obviousness of these claims
rests on an erroneous underlying finding of fact, we cannot sustain the
obviousness rejection of claims 41, 56, 67, and 81, or the obviousness
rejection of their respective dependent claims 42, 44-50, 58-62, 68-75, 83,
and 84.
Independent reissue claim 51 calls for moving an element laterally
through a hopper and across the opening of the hopper. Independent reissue
claim 76 calls for a vibratable element being translatable laterally across an
opening of a hopper. The Examiner found that the stirrer 6 of Kawaguchi is
being moved laterally through the hopper 5 and across the opening of the
hopper as the distal end of the stirrer 6 rotates in the hopper. Ans. 10-11.
We agree with the Appellants that the Examiner erred in this finding. See
App. Br. 16, 18.
An ordinary meaning of “lateral” is “of, relating to, or situated at or
on the side” (Fact 6). The word “laterally”, as used in claims 51 and 76, thus
connotes moving or translating the element from a starting position toward a
side of the hopper. Kawaguchi discloses a vane 6 that rotates in a duct 5,
but it does not disclose that the vane 6 moves toward a side of duct 5
(Facts 7, 8). Rotation of the vane 6 within the housing is not movement of
the vane 6 toward either side of the duct 5. The vane 6 appears to rotate
from a stationary position within the duct 5. As such, we find that the
Examiner erred in finding that Kawaguchi discloses an element that moves
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or translates laterally within the hopper, as called for in claims 51 and 76.
Because the Examiner’s conclusion of obviousness of these claims rests on
an erroneous underlying finding of fact, we cannot sustain the obviousness
rejection of claims 51 and 76, or the obviousness rejection of their respective
dependent claims 52-55 and 77-80.

RECAPTURE ISSUE
The Examiner found that the Appellants amended claims 1 and 21 of
the application which matured into the patent sought to be reissued to
include the combination of up and down vibration motion of a vibratable
member and movement of the vibratable member over the chamber or
through the fine powder while the vibratable member is vibrating and found
that the Appellants argued this combination of features to overcome a prior
art rejection of these claims. Ans. 4. The Examiner’s recapture rejection is
based on the fact that the present reissue claims 41, 42, 44-56, 58-62, 67-69,
71-73, 75-81, 83, and 84 do not now include both of these features.
The Appellants admit that the reissue claims are broader than the
patented claims in an aspect related to surrendered subject matter. App.
Br. 7-8. The Appellants argue that the Examiner erred in rejecting the
claims based on recapture because each of the independent reissue claims on
appeal is materially narrower in other aspects. App. Br. 8-13. The
Appellants also argue, with respect to claims 41 and 67, that these claims are
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not barred by recapture because of notions of fairness and public policy
underlying the reissue process. App. Br. 10-11.
The issues presented by this appeal include:
Have the Appellants established that the Examiner erred in rejecting
claims 41, 42, 44-56, 58-62, 67-69, 71-73, 75-81, 83, and 84 under
35 U.S.C. § 251 based on recapture?

ADDITIONAL FINDINGS OF FACT
Prosecution history of the original application
9. As filed, original application 09/154,930 contained claims 1-42
directed to a method, apparatus, and system for transporting a fine
powder. A copy of originally-filed claims 1-42 is attached as
Appendix 1.
10. Appellants filed a Preliminary Amendment on September 9, 1999
to correct certain typographical errors in the Specification and
typographical errors in the claims relating to claim dependencies
and antecedent basis.
11. On September 14, 1999, the Examiner entered a Non-Final Office
Action (“Original Office Action”).
12. The Original Office Action rejected claims 1-9, 11-29, and 31-40
on various grounds. Claims 41 and 42 were allowed and claims 10
and 30 were objected to as being dependent upon a rejected base
claim, but would have been allowable if rewritten in independent
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form including all of the limitations of the base claim and any
intervening claims. Original Office Action 11.
13. The prior art relied upon by the Examiner in rejecting the claims
was:
Boesch US 5,143,126 Sep. 1, 1992
Parks US 5,826,633 Oct. 27, 1998
Kawaguchi FR 2 537 545 A1 Jun. 15, 1984
Maki JP 07-109031 A Apr. 25, 1995
14. The Examiner rejected (1) claims 1, 5, 7, 9, 11-16, 20-23, 31-35,
and 40 under 35 U.S.C. § 102(e) as being anticipated by Parks,
(2) claims 2-4, 6, 8, and 25-29 under 35 U.S.C. § 103(a) as being
unpatentable over Parks and Maki, (3) claims 18, 19, 38, and 39
under 35 U.S.C. § 103(a) as being unpatentable over Parks and
Boesch, (4) claims 24 and 36 under 35 U.S.C. § 103(a) as being
unpatentable over Parks, and (5) claims 1-6, 9, 12-21, 25-29, and
31-40 under 35 U.S.C. § 103(a) as being unpatentable over
Kawaguchi and Maki. Original Office Action 3-11.
15. On January 24, 2000, Appellants filed an Amendment in response
to the Original Office Action (“the Amendment”).
16. The Amendment amended each of claims 1, 3, 5, 7, 21, 23, 24, and
26, and canceled claims 2 and 22. A copy of prosecution claims 1
and 21, as amended, is attached as Appendix 2.
17. After entry of the Amendment, the application claims were 1, 3-21,
and 23-42.
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18. In the Amendment, Appellants presented arguments with respect to
the patentability of amended claims 1, 3-21, and 23-40.
19. Appellants’ arguments (see below) in the Amendment addressed
the following newly-added limitations of Appellants’ amended
claim 1:
(1) the vibratable member has a distal end in the vicinity of the
opening,
(2) the vibratable member is vibrated in an up and down motion
relative to the powder in the hopper, and
(3) the distal end of the vibratable element is moved laterally
through the fine powder while the vibratable element is vibrating.
Appellants’ arguments also addressed the following newly-added
limitations of Appellants’ amended claim 21:
(1) a vibrator motor to vibrate the vibratable member when within
the fine powder in an up and down motion, and
(2) a mechanism for moving the vibratable member over the
chamber while the vibratable member is vibrating.
20. In response to the rejection of claims 1, 5, 7, 9, 11-16, 20-23, 31-
35, and 40 as being anticipated by Parks, the Appellants argued at
page 8 of the Amendment:
This rejection is respectfully traversed. However, in
order to expedite prosecution, independent claims 1 and
21 have been amended to include limitations similar to
allowed claim 41. Hence, the Parks patent does not
anticipate independent claims 1 and 21. Claims 5, 7, 9,
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11-16 and 20 depend from claim 1. Claims 23, 31-35
and 40 depend from claim 21.
21. In response to the rejections of claims 2-4, 6, 8 and 25-29 as being
unpatentable over Parks and Maki, the Appellants argued at pages
8-9 of the Amendment:
As described above, claims 1 and 21 have been amended
to include limitations similar to those in allowed claim
41. More specifically, claim 1 has been amended to
claim that the vibratable member has a distal end in the
vicinity of the opening, and that the vibratable member
is vibrated in an up and down motion relative to the
powder in the hopper. Further, the distal end of the
vibratable element is moved laterally through the fine
powder while the vibratable element is vibrating. Claim
21 has been amended to claim a vibrator motor to
vibrate the vibratable when within the fine powder in an
up and down motion, and a mechanism for moving the
vibratable member over the chamber while the
vibratable member is vibrating.
In contrast to claims 1 and 21, the Maki reference
illustrates in figure 5 an apparatus 11 that has a rod 14
that is fixed to a vibrating plate 17. Plate 17 is in turn
pressed against a feeding pipe 13. As such, it is
impossible to move rod 14 laterally though [sic] the
powder in pipe 13 while rod 14 is vibrating in an up and
down motion. Hence, claims 3, 4, 6 and 8 which depend
from claim 1, and claims 25-29 which depend from
claim 21 are distinguishable and in condition for
allowance.
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22. In response to the rejections of claims 18, 19, 38, and 39 as being
unpatentable over Parks and Boesch, the Appellants argued at page
9 of the Amendment:
Claims 18 and 19 depend from claim 1 and claims 38
and 39 depend from claim 21. As previously described,
these independent claims are distinguishable over Parks.
Since the Boesch patent also fails to teach or suggest
such limitations, claims 18, 19, 38 and 39 are
distinguishable and in condition for allowance.
23. In response to the rejections of claims 24 and 36 as being
unpatentable over Parks, the Appellants argued at page 9 of the
Amendment:
Claims 24 and 36 depend from claim 21 which is
distinguishable over Parks as previously described.
Hence, claims 24 and 36 are in condition for allowance.
24. In response to the rejections of claims 1-6, 9, 12-17, 18-21, 25-29
and 31-40 as being unpatentable over Kawaguchi and Maki, the
Appellants argued at page 9 of the Amendment:
As previously described, independent claims 1 and 21
have been amended to claim vibration of an element in
an up and down motion and moving the element
laterally through the powder while the element is
vibrating. Nowhere in the Kawaguchi patent is such a
feature taught or suggested. Indeed, Kawaguchi
describes a rotatable stirrer 6. As previously described,
the Maki patent described a vibratable rod that is
mounted such that it is impossible to laterally move
through the powder while vibrating. Hence, the
rejection of claims 1-6, 9, 12-17, 18-21, 25-29 and 31-
40 in view of Kawaguchi and Maki is rendered moot,
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and it is respectfully requested that the section 103
rejection of these claims be withdrawn.
25. On January 28, 2000, the Office mailed a Notice of Allowability,
allowing claims 1, 3-21, and 23-42.
26. Application claims 1, 3-21, and 23-42, were renumbered as patent
claims 1-40. Application claims 1 and 21 correspond to patent
claims 1 and 20, respectively.
27. U.S. Patent 6,182,712 issued February 6, 2001 based on the
original application, and contained claims 1-40, copies of which
are found in attached Appendix 3.
Prosecution history of the reissue application
28. Appellants filed reissue application 10/360,603 on February 6,
2003, seeking to reissue U.S. Patent 6,182,712.
29. Reissue application claims 41, 42, 44-56, 58-62, 67-69, 71-73, 75-
81, 83, and 84 are before the Board in this appeal. A copy of
independent reissue claims 41, 51, 56, 67, 76, and 81 on appeal is
attached at Appendix 4.
Independent Reissue Claims
30. The Examiner found that the Appellant “amended independent
claims 1 and 21 in the parent application 09/154,930 to include
combination of the up and down vibrating motion of the vibratable
member and the movement of the vibratable member as set forth in
original dependent claim 41 of the parent application 09/154,930 to
overcome the prior rejection mailed 9/14/1999 (as pointed out in
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the paragraph on line 13 of page 8 of the amendment filed 1/19/00
in the parent application 09/154,930), hence the limitations
incorporated from original claim 41 in the parent application
09/154,930 to independent claims 1 and 21 in the parent
application 09/154,930 are considered as the surrendered
limitations.” Ans. 4.
31. The Appellants admit that independent reissue claim 41 is broader
than issued claim 1 in the ‘712 patent1, because reissue claim 41
omits the requirement that the distal end of the vibratable element
is in the vicinity of the opening and omits the requirement to move
the element laterally through the powder while vibrating. App.
Br. 7.
32. The Appellants further admit that the broadening of reissue claim
41 relates to surrendered subject matter. Ans. 8. See also FF 6.
33. Independent reissue claim 51 is also broader than amended claim 1
in the ’712 patent, because reissue claim 51 omits the requirements
of: a vibratable element, the vibratable element being in the
vicinity of the opening, and the up and down motion of the
vibratable element.
34. Independent reissue claim 56 is also broader than amended claim 1
because reissue claim 56 omits the requirement that the distal end

1 Issued claim 1 corresponds to claim 1 as amended by Appellants in the
reply to the office action, filed January 24, 2000. Compare Appendices 2, 3.

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of the vibratable element is in the vicinity of the opening and omits
the requirement to move the element laterally through the powder
while vibrating.
35. Independent reissue claims 67 and 81 are broader than amended
claim 212, because claims 67 and 81 omit the requirement of a
mechanism for moving the vibratable member over the chamber
while the vibratable member is vibrating.
36. Independent reissue claim 76 is also broader than amended
claim 21, because reissue claim 76 omits the requirement of the up
and down vibratory motion of the vibratable element.
37. For the same reason provided by the Examiner and uncontested by
Appellants for claim 41, the broadening of reissue claims 51, 56,
67, 76, and 81 also relates to surrendered subject matter because
each claim fails to include the combination of the up and down
vibrating motion of the vibratable member and the movement of
the vibratable member.
38. Independent reissue claims 51 and 76 do not contain any
narrowing amendments as compared to the subject matter of
amended claims 1 and 21, respectively.

2 Reissue claims 67, 76, and 81 and amended application claim 21 are
directed to an apparatus for transporting a powder. Application claim 21, as
amended by Appellants in the reply to the office action, filed January 24,
2000, corresponds to issued claim 20. Compare Appendices 2, 3.
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39. Independent reissue claim 41 contains a narrowing amendment as
compared to the subject matter of amended claim 1 in that the step
of vibrating the element in an up and down motion occurs “at a
frequency in the range from about 1,000 HZ to about 180,000 Hz.”
40. Independent reissue claim 56 contains a narrowing amendment as
compared to the subject matter of amended claim 1 in that it adds
the step of “providing suction to assist in transporting at least a
portion of the powder through the opening.”
41. Independent reissue claim 67 contains a narrowing amendment as
compared to amended claim 21, in that it calls for the chamber to
be “positionable in alignment with the opening to capture powder
flowing through the opening, wherein the chamber is adapted to
capture a unit dose of powder medicament.”
42. Independent reissue claim 81 contains a narrowing amendment as
compared to amended claim 21, in that it calls for the chamber to
be “positionable in alignment with the opening to capture powder
transported through the opening, the chamber being connectable to
a line capable of providing suction to assist the transport of powder
through the opening.”

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
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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).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment … 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 [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993) (quoting Haliczer v. United States, 356
F.2d 541, 545 (Ct. Cl. 1966)); see also Hester Industries Inc. v. Stein, Inc.,
142 F.3d 1472, 1480 (Fed. Cir. 1998).
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. 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. Clement, 131 F.3d at 1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. Clement, 131
F.3d at 1468-69. In this respect, review of arguments and/or amendments
during the prosecution history of the application, which matured into the
patent sought to be reissued, is appropriate. In reviewing the prosecution
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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.” Clement, 131 F.3d at 1469.
See also Hester Industries, 142 F.3d at 1481 (“an amendment to overcome a
prior art rejection evidences an admission that the claim was not
patentable”).
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. Id.
The following principles were articulated in Clement, 131 F.3d at 1469-70:
Sub-step (1): if the reissue claim is as broad as or broader than
the canceled or amended claim in all aspects, the recapture rule bars
the claim;
Sub-step (2): if the reissue claim is narrower in all aspects, the
recapture rules does not apply, but other rejections are possible;
Sub-step (3): if the reissue claim is broader in some aspects, but
narrower in others, then:
(a) if the reissue claim is as broad as or broader in an
aspect germane to a prior art rejection, but narrower in another
aspect completely unrelated to the rejection, the recapture rule
bars the claim;
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(b) if the reissue claim is narrower in an aspect germane
to [a] prior art rejection, and broader in an aspect unrelated to
the rejection, the recapture rule does not bar the claim, but other
rejections are possible.
In North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335 (Fed. Cir. 2005), the Federal Circuit had occasion to further
address sub-step (3)(a) of Clement. North American Container involved a
reissue patent, which had been held invalid by the U.S. District Court for the
Northern District of Texas. The district court based its invalidity holding on
a violation of the recapture rule. During prosecution of an application for
patent, an examiner rejected the claims over a combination of two prior art
references: Dechenne and Jakobsen. To overcome the rejection, North
American Container limited its application claims by specifying that a shape
of “inner walls” of a base of a container was “generally convex.” North
American Container convinced the examiner that the shape of the base, as
amended, defined over “both the Dechenne patent, wherein the
corresponding wall portions 3 are slightly concave … and the Jakobsen
patent, wherein the entire reentrant portion is clearly concave in its entirety.”
North American Container, 415 F.3d at 1340. After a patent issued
containing the amended claims, North American Container filed a reissue
application seeking reissue claims in which (1) the language “inner wall
portions are generally convex” was eliminated, but (2) the language
“wherein the diameter of said re-entrant portion is in the range of 5% to 30%
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of the overall diameter of said side wall” was added. Thus, the claim sought
to be reissued was broader in some aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer require the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” North American Container, 415
F.3d at 1350. The Federal Circuit observed “the reissue claims were not
narrowed with respect to the ‘inner wall’ limitation, thus avoiding the
recapture rule.” The Federal Circuit stated:
[t]hat the reissue claims, looked at as a whole, may be of
“intermediate scope” is irrelevant…. [T]he recapture rule is
applied on a limitation-by-limitation basis, and … [North
American Container's] deletion of the “generally convex”
limitation clearly broadened the “inner wall” limitation.
Id. Thus, the Federal Circuit in North American Container further refined
sub-step (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.

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ANALYSIS
The Appellants present separate arguments for each of the
independent reissue claims 41, 51, 56, 67, 76, and 81, but they do not
present any separate arguments for any of the dependent claims. As such,
we treat the dependent claims as grouped with their respective independent
claim. Claims 42 and 44-50 stand or fall with claim 41, claims 52-55 stand
or fall with claim 51, claims 58-62 stand or fall with claim 56, claims 68-73
and 75 stand or fall with claim 67, claims 77-80 stand or fall with claim 76,
and claims 83 and 84 stand or fall with claim 81. 37 C.F.R.
§ 41.37(c)(1)(vii).
The Appellants do not dispute that independent reissue claim 41, 51,
56, 67, 76, and 81 are broader than the claims of the ‘712 patent, and that the
broadening of these claims relates to surrendered subject matter (steps 1 and
2 of the Clement test). App. Br. 5-13.
The Appellants argue that the Examiner erred in rejecting reissue
claims 41, 51, 56, 67, 76, and 81 under 35 U.S.C. § 251 because, under step
3 of the Clement test, “when a reissue claim recites a broader form of the
key limitation, then the reissue claim may not be rejected under the recapture
doctrine. App. Br. 9 (citing Ex parte Eggert, 67 USPQ2d 1716 (BPAI
2003), precedential published decision).
We consider each independent claim in turn.
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Reissue claim 41
The Appellants provided a claim chart comparing independent reissue
claim 41 with amended claim 1 of the ‘712 patent. The Appellants noted
that reissue claim 41 is narrower than amended claim 1 in that reissue claim
41 calls for the element to be vibrated in an up and down motion “at a
frequency in the range from about 1,000 Hz to about 180,000 Hz.” App.
Br. 6-7. We agree that claim 41 is narrower in this aspect (Fact 39).
The Appellants also noted several instances in which reissue claim 41
is broader than amended claim 1, including in aspects relating to surrendered
subject matter. App. Br. 6-7; see also Facts 30-32. Thus, reissue claim 41 is
broader than amended claim 1 in some aspects, but narrower in others, so
that sub-step (3) of Step 3 of the Clement test applies.
The question before us is thus whether reissue claim 41 is as broad or
broader than amended claim 1 in “an aspect germane to a prior art rejection”
and narrower in another aspect completely unrelated to the rejection.
The subject matter of reissue claim 41 is broader in an aspect germane
to a prior art rejection, because it completely omits the step of “moving the
distal end of the vibratable element laterally through the fine powder while
the vibratable element is vibrating” (Fact 31). The narrower limitation of
vibrating the element in an up and down motion “at a frequency in the range
from about 1,000 Hz to about 180,000 Hz” while further narrowing one of
the two limitations added to amended claim 1 during prosecution to
overcome the prior art rejection, is completely unrelated to the requirement
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in amended claim 1 of simultaneous vibration and lateral movement of the
vibratable element. As such, claim 41 fails sub-step (3)(a) of step (3) of the
Clement test and is barred by recapture. Nor is limitation of vibrating the
element in an up and down motion “at a frequency in the range from about
1,000 Hz to about 180,000 Hz” an overlooked limitation within the meaning
of Hester. See e.g., claim 4 of the application as filed.
We now turn to the Appellants’ public policy argument. As the
Appellants explained, original claim 4 of the ‘712 patent recited the
frequency range now called for in reissue claim 41. App. Br. 10; see also
Appendix 1. Original claim 4 was rejected under 35 U.S.C. § 103 as being
unpatentable over Parks in view of Maki (Fact 14). The Appellants note that
“because the original application was filed before November 29, 1999,
35 U.S.C. § 103(c) exclusion was not available to Appellant.” App. Br. 10.
Thus, the Appellants contend that at the time of amending claim 1, they
chose to amend the claim in a manner other than by adding the claim 4
frequency limitation to the claim. App. Br. 10.
Since the filing of the ‘712 patent on September 17, 1998, the patent
law has changed to allow applicants to exclude commonly-owned prior art
under 35 U.S.C. § 103(c). As noted by the Appellants, the change to
35 U.S.C. § 103(c) effectively allowed the Appellants to exclude Parks as a
reference against the reissue claims. App. Br. 11 (noting that the Examiner
withdrew the previous rejection of claim 41 based on Parks under 35 U.S.C.
§ 103(a)).
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Section 103, as initially amended by the AIPA to allow exclusion of
commonly-owned prior art under § 103(c), applied to applications filed on
or after November 29, 1999. Pub. L. 106-113, 113 Stat. 1501, 1501A-591
(1999). Section 103(c) was further amended, by enactment of the CREATE
Act on December 10, 2004, to allow a reference to be excluded if it was
made by or on behalf of parties to a joint research agreement. Pub. L. 108-
453, 118 Stat. 3596 (2004). The CREATE Act includes the amendment to
35 U.S.C. § 103(c) made by section 4807 of the AIPA (see Pub. L. 106-113,
113 Stat. 1501, 1501A-591 (1999)), viz, changing of “subsection (f) or (g)”
to “one or more of subsections (e), (f), or (g).” The CREATE Act applies to
applications, including reissues, for which the patent is granted on or after
December 10, 2004. As such, the CREATE Act applies in the present
reissue application and allows the Appellants to exclude a commonly-owned
reference under 35 U.S.C. § 103(c). The Appellants contend that “[s]ince
claim 41 represents an amendment that places claim 41 in condition for
allowance now, but might not have if made during prosecution of the
original application, it would be unfair to maintain that making such an
amendment at this time constitutes recapture.” Reply Br. 7.
Congress, however, foresaw Appellants’ argument and made clear
that the changes to § 103(c) should not act to avoid the policies behind the
recapture doctrine. As stated in the legislative history of the CREATE Act,
“Congress intends the Act to apply to any reissue patent granted on or after
the date of enactment, subject to the reissue recapture doctrine, which
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prevents a patentee from obtaining claims to subject matter that were
surrendered in the original application for patent.” See H.R. Rep. No. 108-
425, at 6-7 (2003). The U.S. Patent and Trademark Office incorporated this
guidance from Congress into the rule-making used to implement the Act.
The Federal Register notice of rule-making to implement the CREATE Act
stated:
Because the CREATE Act applies only to patents granted
on or after December 10, 2004, the recapture doctrine may
prevent the presentation of claims in reissue applications that
had been amended or cancelled (e.g., to avoid a rejection under
35 U.S.C. § 103(a) based upon subject matter that may now be
disqualified under the CREATE Act) during the prosecution of
the application which resulted in the patent for which reissue is
sought.
Changes to Implement the Cooperative Research and Technology
Enhancement Act of 2004, 70 Fed. Reg. 54259, 54260 (Sept. 14,
2005)(citing to H.R. Rep. No. 108-415, at 6-7 (2003)). See also response to
Comment 2, 70 Fed. Reg. at 54263 (stating that the statement concerning the
recapture doctrine is a restatement of what is stated in the legislative history
of the CREATE Act). See also similar language in MPEP § 706.02(l)(1)(II).
As such, we hold that claim 41 is barred by recapture.

Reissue claim 51
Reissue claim 51 is broader than amended claim 1 in all aspects, and
thus this claim fails sub-step (1) of Step 3 of the Clement test (Facts 33, 37,
38). The Appellants fail to direct us to an aspect of claim 51 that is narrower
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than amended claim 1. App. Br. 11. Rather, the Appellants argue that
“under the second analysis of step 3 [of the Clement test], the recitation of
‘moving the element laterally through the hopper’ is a broadened version of
the limitation added in the original case and is not an example of recapture.”
Id. (citing MPEP § 1412.02(C)(2)(d) and Ex parte Eggert).
The subject matter of reissue claim 51 is broader than the surrendered
subject matter of amended claim 1, because it omits the requirements of: a
vibratable element, the vibratable element being in the vicinity of the
opening, and the up and down motion of the vibratable element (Facts 33,
37). Thus, reissue claim 51 is broader in an aspect germane to the prior art
rejection. North American Container, 415 F.3d at 1350 (holding that
“broader in an aspect germane to a prior art rejection” of the Clement test
means broader with respect to a specific limitation added to overcome prior
art in prosecution of the original application and eliminated in the reissue
claims).3 Reissue claim 51 is not narrower than amended claim 1 in any
aspect (Fact 38).

3 For the same reasons provided by the Board in Ex parte Lanier, No. 2007-
3925, 2009 WL 789925, at *11 (BPAI March 23, 2009) (Judge MacDonald,
concurring), we agree that the rationale of the majority in Ex Parte Eggert,
67 USPQ2d 1716 (BPAI 2003) (precedential) is inconsistent with the
rationale of the Federal Circuit in North American Container and should no
longer be followed or be applicable to proceedings before the USPTO. See
also (1) Lanier, 2009 WL 789925, at *26-29 (Judge McKelvey, concurring)
and (2) MPEP § 1412.02(I.C) (8th ed., Rev. 7, July 2008).
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According to sub-step (1) of step (3) of the Clement test, “if the
reissue claim is as broad as or broader than the canceled or amended claim
in all aspects, the recapture rules bars the claim.” In re Clement, 131 F.3d at
1470. As such, we hold that claim 51 is barred by recapture.
Reissue claim 56
Reissue claim 56 is broader than amended claim 1, including in
aspects relating to surrendered subject matter (Facts 34, 37). Reissue claim
56 is also narrower than amended claim 1 in that reissue claim 56 calls for
the step of “providing suction to assist in transporting at least a portion of
the powder through the opening” (Fact 40). Thus, reissue claim 56 is
broader than amended claim 1 in some aspects, but narrower in others, so
that sub-step (3) of Step 3 of the Clement test applies.
The question before us is thus whether reissue claim 56 is as broad or
broader than amended claim 1 in “an aspect germane to a prior art rejection”
and narrower in another aspect completely unrelated to the rejection. We
find that it is.
The subject matter of reissue claim 56 is broader in an aspect germane
to a prior art rejection, because it completely omits the step of “moving the
distal end of the vibratable element laterally through the fine powder while
the vibratable element is vibrating” (Fact 34). The narrower limitation of
providing suction is completely unrelated to the limitations added to
amended claim 1 during prosecution to overcome the prior art rejection. As
such, claim 56 fails sub-step (3)(a) of step (3) of the Clement test and is
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barred by recapture. Nor is the step of “providing suction to assist in
transporting at least a portion of the powder through the opening” an
overlooked limitation within the meaning of Hester. See e.g., claims 13 and
32 of the application as filed.
Reissue claim 67
Reissue claim 67 is broader than amended claim 21, including in
aspects relating to surrendered subject matter (Facts 35, 37). Reissue claim
67 is also narrower than amended claim 21 in that reissue claim 67 calls for
the actuator used to vibrate the vibratable member in an up and down motion
“to assist in transporting the powder through the opening” and calls for the
chamber to be “positionable in alignment with the opening to capture
powder flowing through the opening, wherein the chamber is adapted to
capture a unit dose of powder medicament” (Fact 41). Thus, reissue claim
67 is broader than amended claim 21 in some aspects, but narrower in
others, so that sub-step (3) of Step 3 of the Clement test applies.
The question before us is thus whether reissue claim 67 is as broad or
broader than amended claim 21 in “an aspect germane to a prior art
rejection” and narrower in another aspect completely unrelated to the
rejection. We find that it is.
The subject matter of reissue claim 67 is broader in an aspect germane
to a prior art rejection, because it completely omits the claimed “mechanism
for moving the vibratable member over the chamber while the vibratable
member is vibrating” (Facts 35, 37). The new recitation that the up-and-
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down vibratory motion “assists in transporting the powder through the
opening” simply adds a functional recitation that does not further narrow the
claim. The narrower limitation regarding the positioning of the chamber is
completely unrelated to the limitations added to amended claim 21 during
prosecution to overcome the prior art rejection. As such, claim 67 fails sub-
step (3) of Step 3 of the Clement test. Nor is the limitation for the chamber to
be “positionable in alignment with the opening to capture powder flowing
through the opening, wherein the chamber is adapted to capture a unit dose
of powder medicament” an overlooked limitation within the meaning of
Hester. See e.g., claims 16 and 17 of the application as filed.
The Appellants contend that reissue claim 67 should be entitled to
reissue examination for the same fairness and public policy reasons as were
raised with regard to claim 41. For the same reasons discussed above in our
analysis of claim 41, we fail to find Appellants’ public policy argument
persuasive in light of the legislative history accompanying the CREATE
Act.
Thus, claim 67 is barred by recapture.
Reissue claim 76
Reissue claim 76 is broader than amended claim 21 in all aspects, and
thus this claim fails sub-step (1) of Step 3 of the Clement test (Facts 36-38).
The Appellants fail to direct us to an aspect of claim 76 that is narrower than
amended claim 21. App. Br. 12-13. Rather, the Appellants argue that
“[c]laim 76 does not recite surrendered subject matter in the original
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application” and further argue that the feature of “the vibratable element
being translatable laterally across the opening” “was not added for the
purpose of distinguishing prior art during prosecution of the original
application.” App. Br. 13. This position is inconsistent with the Appellant’s
earlier admission that the requirement to move the element laterally through
the powder while vibrating was argued by Appellant to distinguish the prior
art rejection made by the Examiner and is thus surrendered subject matter.
App. Br. 7-8.
The subject matter of reissue claim 76 is broader than the surrendered
subject matter of amended claim 21, because it omits the requirements of the
distal end of the vibratable element being in the vicinity of the opening and
the up and down vibratory motion of the vibratable element (Fact 36). Thus,
reissue claim 76 is broader in an aspect germane to the prior art rejection.
North American Container, 415 F.3d at 1350 (holding that “broader in an
aspect germane to a prior art rejection” of the Clement test means broader
with respect to a specific limitation added to overcome prior art in
prosecution of the original application and eliminated in the reissue claims).
Reissue claim 76 is not narrower than amended claim 21 in any aspect
(Fact 38).
According to sub-step (1) of step (3) of the Clement test, “if the
reissue claim is as broad as or broader than the canceled or amended claim
in all aspects, the recapture rules bars the claim.” In re Clement, 131 F.3d at
1470. As such, we hold that claim 76 is barred by recapture.
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Reissue claim 81
Reissue claim 81 is broader than amended claim 21, including in
aspects relating to surrendered subject matter (Facts 35, 37). Reissue claim
81 is also narrower than amended claim 21 in that reissue claim 81 calls for
the chamber to be “positionable in alignment with the opening to capture
powder transported through the opening, the chamber being connectable to a
line capable of providing suction to assist the transport of powder through
the opening” (Fact 42). Thus, reissue claim 81 is broader than amended
claim 21 in some aspects, but narrower in others, so that sub-step (3) of Step
3 of the Clement test applies.
The question before us is thus whether reissue claim 81 is as broad or
broader than amended claim 21 in “an aspect germane to a prior art
rejection” and narrower in another aspect completely unrelated to the
rejection. We find that it is.
The subject matter of reissue claim 81 is broader in an aspect germane
to a prior art rejection, because it completely omits the claimed “mechanism
for moving the vibratable member over the chamber while the vibratable
member is vibrating” (Facts 35, 37). The narrower limitations regarding the
positioning of the chamber and the use of suction are completely unrelated
to the limitations added to amended claim 21 during prosecution to
overcome the prior art rejection. Thus, claim 81 fails sub-step (3)(a) of step
(3) of the Clement test and is barred by recapture. Nor are the limitations for
the chamber to be “positionable in alignment with the opening to capture
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powder flowing through the opening” and “the chamber being connectable
to a line capable of providing suction to assist the transport of powder
through the opening” overlooked limitations within the meaning of Hester.
See e.g., claims 13, 16, 17, and 32 of the application as filed.

CONCLUSIONS
The Appellants have failed to show that the Examiner erred in finding
that Parks discloses an element that is vibratable within a hopper and
translatable laterally across an opening in the hopper, as called for in reissue
claims 51 and 76.
The Appellants have established that the Examiner erred in finding
that Maki discloses an element that is vibrated in an up and down motion, as
called for in reissue claims 41, 56, and 67.
The Appellants have also established that the Examiner erred in
finding that Kawaguchi discloses an element that is moved laterally through
the hopper and across the opening, as called for in reissue claims 51 and 76.
The Appellants have failed to show that the Examiner erred in holding
that claims 41, 42, 44-56, 58-62, 67-69, 71-73, 75-81, 83, and 84 are barred
by recapture.

DECISION
The decision of the Examiner to reject claims 41, 42, 44-56, 58-62,
67-69, 71-73, 75-81, 83, and 84 is AFFIRMED.

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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) (2007).

AFFIRMED

Vsh

NOVARTIS
CORPORATE INTELLECTUAL PROPERTY
ONE HEALTH PLAZA 104/3
EAST HANOVER NJ 07936-1080
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APPENDIX 1

Claims of Original Patent Application 09/154,930,
as filed on September 17, 1998

1. A method for transporting a fine powder, comprising:
placing the fine powder into a hopper having an opening therein;
vibrating a vibratable element within the fine powder in the vicinity of
the opening; and
capturing at least a portion of the fine powder exiting the opening
within a chamber, wherein the captured powder is sufficiently uncompacted
so that it may be dispersed upon removal from the chamber.

2. A method as in claim 1, wherein the vibratable element is vibrated in
an up and down motion relative to the powder in the hopper.

3. A method as in claim 2, wherein the vibratable element is coupled to
an ultrasonic horn, and wherein the vibrating step comprises actuating the
ultrasonic horn.

4. A method as in claim 1, wherein the vibratable element is vibrated at a
frequency in the range from about 1,000 Hz to about 180,000 Hz.

5. A method as in claim 1, wherein the vibratable element has a distal
end which is placed near the opening, and wherein the distal end has an end-
member attached thereto which is vibrated over the chamber.

6. A method as in claim 1, wherein the end-member is vertically spaced
apart from the chamber by a distance in the range from about 0.01 mm to
about 10 mm.

7. A method as in claim 1, further comprising moving the element across
the opening while vibrating the element.

8. A method as in claim 6, further comprising translating the element
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along the opening at a rate that is less than about 100 cm/s.

9. A method as in claim 7, further comprising periodically leveling the
powder within the hopper.

10. A method as in claim 9, wherein the leveling step comprises placing a
projecting member on the vibratable element at a location spaced apart from
a distal end of the vibratable element.

11. A method as in claim 1, wherein multiple chambers are aligned with
the opening, and further comprising moving the vibratable element along the
opening to pass over each chamber.

12. A method as in claim 1, wherein the fine powder comprises a
medicament composed of individual particles having a mean size in the
range from about 1 µm to 100 µm.

13. A method as in claim 1, wherein the capturing step further comprises
drawing air through the chamber which is positioned below the opening,
wherein the drawn air assists in drawing the fine powder into the chamber.

14. A method as in claim 1, further comprising transferring the captured
powder from the chamber to a receptacle.

15. A method as in claim 14, wherein the transferring step comprises
introducing a compressed gas into the chamber to expel the captured powder
into the receptacle.

16. A method as in claim 1, further comprising adjusting the amount of
captured powder to be a unit dosage amount.

17. A method as in claim 16, wherein the adjusting step comprises
providing a thin plate below the hopper, with the plate having an aperture
that is aligned with the chamber, and further comprising moving the
chamber relative to the plate to scrape the excess powder from the chamber.
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18. A method as in claim 1, wherein the hopper is a primary hopper, and
wherein the placing step comprises transferring the powder from a
secondary hopper to the primary hopper.

19. A method as in claim 18, further comprising vibrating the secondary
hopper to transfer the powder to the primary hopper.

20. A method as in claim 1, further comprising dispensing the powder
from the chamber and changing the size of the chamber.

21. Apparatus for transporting a fine powder, comprising:
a hopper having an opening therein, the hopper being adapted to
receive the fine powder;
at least one chamber which is movable to allow the chamber to be
placed in close proximity to the opening;
a vibratable member having a proximal end and a distal end, the
vibratable member being positionable within the hopper such that the distal
end is near the opening; and
a vibrator motor to vibrate the vibratable member when within the
fine powder.

22. An apparatus as in claim 19, further comprising a mechanism for
translating the vibratable member over the chamber.

23. An apparatus as in claim 20, further comprising a rotatable member
having a plurality of chambers about its periphery which are alignable with
the opening, and wherein the translating mechanism is configured to
translate the vibratable member along the opening so that the vibratable
member passes over each chamber.

24. An apparatus as in claim 21, wherein the translating mechanism
comprises a linear drive mechanism which translates the vibratable member
along the opening at a rate that is less than about 100 cm/s.

25. An apparatus as in claim 21, wherein the vibrator motor vibrates the
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vibratable member at a frequency in the range from about 1,000 Hz to about
180,000 Hz.

26. An apparatus as in claim 21, wherein the vibrator comprises an
ultrasonic horn which vibrates the element in said up and down motion
relative to the powder.

27. An apparatus as in claim 26, wherein the vibratable element is
cylindrical in geometry and has a diameter in the range from about 1.0 mm
to about 10 mm.

28. An apparatus as in claim 27, further comprising an end member at the
distal end of the vibratable member.

29. An apparatus as in claim 28, wherein the end member radially extends
from the vibratable element.

30. An apparatus as in claim 28, further comprising a powder levelling
member spaced above the end member.

31. An apparatus as in claim 21, wherein the chamber is disposed within a
rotatable member which is placed in a first position having the chamber
aligned with the opening, and a second position having the chamber aligned
with a receptacle.

32. An apparatus as in claim 21, further comprising a port in the bottom
of the chamber, and a vacuum source in communication with the port to
assist in drawing the fine powder from the hopper and into the chamber.

33. An apparatus as in claim 32, further comprising a filter disposed
across the port.

34. An apparatus as in claim 34, further comprising a source of
compressed gas in communication with the port to eject the captured powder
from the chamber and into the receptacle.
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35. An apparatus an in claim 31, further comprising a controller for
controlling actuation of the gas source and the vacuum source.

36. An apparatus as in claim 31, further comprising a plurality of hoppers
disposed above a plurality of rotatable members which each include a
plurality of chambers, and further comprising a plurality of elements and a
plurality of vibrators to vibrate the elements.

37. An apparatus as in claim 20, further comprising a plate disposed
below the hopper, with the plate having an aperture that is aligned with the
chamber, and wherein the chamber is movable relative to the plate to allow
excess powder to be scraped from the chamber.

38. An apparatus as in claim 21, wherein the hopper is a primary hopper
and further comprising a secondary hopper disposed above the primary
hopper to transfer powder to the primary hopper.

39. An apparatus as in claim 38, further comprising a shaking mechanism
to vibrate the secondary hopper.

40. An apparatus as in claim 31, wherein the chamber is formed in a
change tool, and wherein the change tool is removably coupled to the
rotatable member.

41. A system for transporting a fine powder, comprising:
a plurality of rotatable members each having a row of chambers about
their periphery;
a hopper disposed above each rotatable member, wherein each hopper
includes an opening;
a vibratable element that is positionable within each of the hoppers,
wherein each vibratable element has a distal end near the opening;
a vibrator coupled to each vibratable element to vibrate the elements
in an up and down motion; and

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a mechanism to translate each vibratable element along each of the
hoppers while the elements are vibrating.

41. A system as in claim 41, further comprising a controller to control
rotation of the vibratable members, the vibrators, and the translation
mechanism.

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APPENDIX 2
Claims 1 and 21 of Original Patent Application 09/154,930,
as Amended on January 24, 2000

(matter underlined added by the amendment)
(matter in [brackets] deleted by the amendment)

1. A method for transporting a fine powder, comprising:
placing the fine powder into a hopper having an opening therein;
vibrating a vibratable element within the fine powder, wherein the
vibratable member has a distal end in the vicinity of the opening, and
wherein the vibratable member is vibrated in an up and down motion
relative to the powder in the hopper; [and]
moving the distal end of the vibratable element laterally through the
fine powder while the vibratable element is vibrating; and
capturing at least a portion of the fine powder exiting the opening
within a chamber, wherein the captured powder is sufficiently uncompacted
so that it may be dispersed upon removal from the chamber.

21. Apparatus for transporting a fine powder, comprising:4
a hopper having an opening therein, the hopper being adapted to
receive the fine powder;
at least one chamber which is movable to allow the chamber to be
placed in close proximity to the opening;
a vibratable member having a proximal end and a distal end, the
vibratable member being positionable within the hopper such that the distal
end is near the opening; [and]
a vibrator motor to vibrate the vibratable member when within the
fine powder in an up and down motion; and
a mechanism for moving the vibratable member over the chamber
while the vibratable member is vibrating.

4 Prosecution claim 21 was renumbered as issued claim 20 in the ’712
patent.
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APPENDIX 3
Claims of Patent 6,182,712 B1, as Issued on February 6, 2001

1. A method for transporting a fine powder, comprising:
placing the fine powder into a hopper having an opening therein;
vibrating a vibratable element within the fine powder, wherein the
vibratable member has a distal end in the vicinity of the opening, and
wherein the vibratable member is vibrated in an up and down motion
relative to the powder in the hopper;
moving the distal end of the vibratable element laterally through the
fine powder while the vibratable element is vibrating; and
capturing at least a portion of the fine powder exiting the opening
within a chamber, wherein the captured powder is sufficiently uncompacted
so that it may be dispersed upon removal from the chamber.

2. A method as in claim 1, wherein the vibratable element is coupled to
an ultrasonic horn, and wherein the vibrating step comprises actuating the
ultrasonic horn.

3. A method as in claim 1, wherein the vibratable element is vibrated at a
frequency in the range from about 1,000 Hz to about 180,000 Hz.

4. A method as in claim 1, wherein the distal end has an end-member
attached thereto which is vibrated over the chamber.

5. A method as in claim 4, wherein the end-member is vertically spaced
apart from the chamber by a distance in the range from about 0.01 mm to
about 10 mm.

6. A method as in claim 5, wherein the end-member is vertically space
apart from the chamber by a distance in the range from about 0.01 mm to
about 10 mm.

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7. A method as in claim 1, further comprising moving the distal end of
the element across the opening while vibrating the element.

8. A method as in claim 7, further comprising periodically levelling the
powder within the hopper.

9. A method as in claim 8, wherein the levelling step comprises placing
a projecting member on the vibratable element at a location spaced apart
from a distal end of the vibratable element.

10. A method as in claim 1, wherein multiple chambers are aligned with
the opening, and further comprising moving the vibratable element along the
opening to pass over each chamber.

11. A method as in claim 1, wherein the fine powder comprises a
medicament composed of individual particles having a mean size in the
range from about 1 µm to 100 µm.

12. A method as in claim 1, wherein the capturing step further comprises
drawing air through the chamber which is positioned below the opening,
wherein the drawn air assists in drawing the fine powder into the chamber.

13. A method as in claim 1, further comprising transferring the captured
powder from the chamber to a receptacle.

14. A method as in claim 13, wherein the transferring step comprises
introducing a compressed gas into the chamber to expel the captured powder
into the receptacle.

15. A method as in claim 1, further comprising adjusting the amount of
captured powder to be a unit dosage amount.

16. A method as in claim 15, wherein the adjusting step comprises
providing a thin plate below the hopper, with the plate having an aperture
that is aligned with the chamber, and further comprising moving the
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chamber relative to the plate to scrape the excess powder from the chamber.
17. A method as in claim 1, wherein the hopper is a primary hopper, and
wherein the placing step comprises transferring the powder from a
secondary hopper to the primary hopper.

18. A method as in claim 17, further comprising vibrating the secondary
hopper to transfer the powder to the primary hopper.

19. A method as in claim 1, further comprising dispensing the powder
from the chamber and changing the size of the chamber.

20. Apparatus for transporting a fine powder, comprising:
a hopper having an opening therein, the hopper being adapted to
receive the fine powder;
at least one chamber which is movable to allow the chamber to be
placed in close proximity to the opening;
a vibratable member having a proximal end and a distal end, the
vibratable member being positionable within the hopper such that the distal
end is near the opening;
a vibrator motor to vibrate the vibratable member when within the
fine powder in an up and down motion; and
a mechanism for moving the vibratable member over the chamber
while the vibratable member is vibrating.

21. An apparatus as in claim 20, further comprising a rotatable member
having a plurality of chambers about its periphery which are alignable with
the opening, and wherein the moving mechanism is configured to translate
the vibratable member along the opening so that the vibratable member
passes over each chamber.

22. An apparatus as in claim 20, wherein the moving mechanism
comprises a linear drive mechanism which translates the vibratable member
along the opening at a rate that is less than about 100 cm/s.

23. An apparatus as in claim 20, wherein the vibrator motor vibrates the
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vibratable member at a frequency in the range from about 1,000 Hz to about
180,000 Hz.

24. An apparatus as in claim 20, wherein the vibrator motor comprises an
ultrasonic horn which vibrates the element in said up and down motion
relative to the powder.

25. An apparatus as in claim 24, wherein the vibratable element is
cylindrical in geometry and has a diameter in the range from about 1.0 mm
to about 10 mm.

26. An apparatus as in claim 25, further comprising an end member at the
distal end of the vibratable member.

27. An apparatus as in claim 26, wherein the end member radially extends
from the vibratable element.

28. An apparatus as in claim 26, further comprising a powder levelling
member spaced above the end member.

29. An apparatus as in claim 20, wherein the chamber is disposed within a
rotatable member which is placed in a first position having the chamber
aligned with the opening, and a second position having the chamber aligned
with a receptacle.

30. An apparatus as in claim 29, further comprising a plurality of hoppers
disposed above a plurality of rotatable members which each include a
plurality of chambers, and further comprising a plurality of vibratable
elements and a plurality of vibrators to vibrate the elements.

31. An apparatus as in claim 29, wherein the chamber is formed in a
change tool, and wherein the change tool is removably coupled to the
rotatable member.

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32. An apparatus as in claim 21, further comprising a port in the bottom
of the chamber, and a vacuum source in communication with the port to
assist in drawing the fine powder from the hopper and into the chamber.

33. An apparatus as in claim 32, further comprising a filter disposed
across the port.

34. An apparatus as in claim 32, further comprising a source of
compressed gas in communication with the port to eject the captured powder
from the chamber and into the receptacle.

35. An apparatus an in claim 34, further comprising a controller for
controlling actuation of the gas source and the vacuum source.

36. An apparatus as in claim 20, further comprising a plate disposed
below the hopper, with the plate having an aperture that is aligned with the
chamber, and wherein the chamber is movable relative to the plate to allow
excess powder to be scraped from the chamber.

37. An apparatus as in claim 20, wherein the hopper is a primary hopper
and further comprising a secondary hopper disposed above the primary
hopper to transfer powder to the primary hopper.

38. An apparatus as in claim 37, further comprising a snaking mechanism
to vibrate the secondary hopper.

39. A system for transporting a fine powder, comprising:
a plurality of rotatable members each having a row of chambers about
their periphery;
a hopper disposed above each rotatable member, wherein each hopper
includes an opening;
a vibratable element that is positionable within each of the hoppers,
wherein each vibratable element has a distal end near the opening;
a vibrator coupled to each vibratable element to vibrate the elements
in an up and down motion; and
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a mechanism to translate each vibratable element along each of the
hoppers while the elements are vibrating.

40. A system as in claim 39, further comprising a controller to control
rotation of the vibratable members, the vibrators, and the translation
mechanism.

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APPENDIX 4
Independent Claims of Reissue Application 10/360,603, as Appealed

41. A method of transporting a powder, the method comprising:
placing the powder into a hopper having an opening;
vibrating an element within the hopper, wherein the element is
vibrated in an up and down motion at a frequency in the range from
about 1,000 Hz to about 180,000 Hz; and
capturing within a chamber at least a portion of the powder
exiting through the opening.

51. A method of transporting a powder, the method comprising:
placing the powder into a hopper having an opening;
providing an element within the hopper and moving the element
laterally through the hopper and across the opening: and
capturing at least a portion of the powder exiting the opening.

56. A method of transporting a powder, the method comprising:
placing the powder into a hopper having an opening;
vibrating an element within the hopper, wherein the element is
vibrated in an up and down motion; and
providing suction to assist in transporting at least a portion of
the powder through the opening.

67. An apparatus for transporting a powder, the apparatus
comprising:
a hopper adapted to receive the powder, the hopper having an
opening;
a vibratable element within the hopper;
an actuator to vibrate the vibratable element in an up and down
motion to assist in transporting the powder through the opening, and
a chamber positionable in alignment with the opening to
capture powder flowing through the opening, wherein the chamber is
adapted to capture a unit dose of powder medicament.
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76. An apparatus for transporting a powder, the apparatus
comprising:
a hopper adapted to receive the powder, the hopper having an
opening;
a vibratable element within the hopper, the vibratable element
being translatable laterally across the opening; and
an actuator to vibrate the vibratable element to assist in
transporting the powder through the opening.

81. An apparatus for transporting a powder, the apparatus
comprising:
a hopper adapted to receive the powder, the hopper having an
opening;
a vibratable element within the hopper, the vibratable element
being vibratable in an up and down motion;
an actuator to vibrate the vibratable element; and
a chamber positionable in alignment with the opening to capture
powder transported through the opening, the chamber being
connectable to a line capable of providing suction to assist the
transport of powder through the opening.