Ex Parte Tewes et al

Patent Trial and Appeal Board

Apr 30, 2014

13253540 (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte GÜNTER TEWES, JOCHEN BIENS, and BERND HOLL
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Appeal 2014-001907
Application 13/253,5401
Technology Center 3600
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Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
JAMES P. CALVE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 This is an application for reissue of U.S. Patent 7,597,402 B2
(hereinafter “′402 patent”), which issued October 6, 2009 on U.S.
Application 10/586,428.
Appeal 2014-001907
Application 13/253,540
Patent 7,597,402 B2
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STATEMENT OF THE CASE
Günter Tewes et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 18, 19, and 21-23 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. Claims 8, 20, 24, 27-31, and 36-40 have been canceled and claims
1-7, 9-17, 25, 26, and 32-35 have been allowed by the Examiner. App. Br.
22; Final Rej. 1. We have jurisdiction over this appeal under 35 U.S.C. §
6(b).

INVENTION
Appellants’ invention relates to a tool holder for receiving a chisel.
′402 patent, col. 1, ll. 6-8 and fig. 2.
Claim 18 is illustrative of the claimed invention and reads as follows:
18. A tool holder arrangement with a chisel holder having a
chisel receiver in a holding neck for receiving a chisel which is
exchangeablv received within the chisel receiver embodied in a
shape of a bore and having a chisel insertion opening, wherein
the chisel holder has a fastening side with a fastening neck and
facing away from the fastening side has an exterior, and
wherein during a tool operation centrifugal forces act in a
direction from the fastening side to the exterior, the tool holder
arrangement comprising:
the holding neck having an exterior opening penetrating
an interior wall of the chisel receiver and creating a spatial
connection with surroundings, and
the exterior opening opening the chisel receiver toward
the exterior;
wherein the exterior opening is a slit-shaped cutout
having two delimitation faces extending parallel with respect to

2 We refer to the Substitute Appeal Brief, filed on July 5, 2013.
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Application 13/253,540
Patent 7,597,402 B2
3
each other along a longitudinal axis of the chisel receiver, and
the delimitation faces are one of at a distance from each other
which is less than or equal to a bore diameter of the chisel
receiver, and extending at an angle with respect to each other at
an angle of less than 180 degrees.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
To determine whether reissue claims violate the recapture rule
involves a three-step analysis. In re Youman, 679 F.3d 1335, 1343 (Fed.
Cir. 2012). “Under the first step, we ‘determine whether and in what
“aspect” the reissue claims are broader than the patent[] claims.’” Id. Under
the second step, we “‘determine whether the broader aspects of the reissue
claims relate to surrendered subject matter.’” Id. If the reissue claims are
broader relative to the patented claims in a manner related to surrendered
subject matter, then under the third step, we “‘determine whether the
surrendered subject matter has crept into the reissue claim’” (i.e., whether
the reissue “claims are materially narrowed in a way that avoids substantial
or whole recapture of the surrendered subject matter”). Id. at 1344-1345.
In this case, with respect to the first step, both the Examiner and
Appellants agree that reissue claims 18, 19, and 21-23 are broader than
patented claim 1 because all reissue claims remove the following limitation:
wherein the chisel receiver (20) is a through-
bore and has an expulsion opening (21) facing
away from the chisel insertion opening (24), and
the opening (22) opens the chisel receiver (20)
near the expulsion opening (21) and extends,
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Patent 7,597,402 B2
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starting at the expulsion opening (21) in a second
direction of the chisel insertion opening (24).

′402 patent, col. 4, ll. 51-56; see also App. Br. 15 and Ans. 10 .
As to the second step, the Examiner and Appellants agree that the
broader aspects of the reissue claims relate to the surrendered subject matter.
App. Br. 15; Ans. 10. As noted by Appellants, “the arguments and
amendments submitted in the Jan. 27, 2009 Response to Non-final Office
action in the original prosecution operate as a surrender of subject matter.”
App. Br. 15; see also App. Br. 133. The Examiner and Appellants further
agree that that “the surrendered content includes any opening not extending
‘from the expulsion opening toward the direction of the chisel insertion
opening.’” App. Br. 16; Ans. 10.
Finally, in regard to step three of the analysis, the Examiner compared
reissue claims 18 and 19 to original dependent claims 10 and 11,
respectively, and concluded that, “[t]he reissue claim[s are]narrowed only in
the addition of the modifier ‘exterior’ to the ‘opening’,” which the Examiner
did not find to be a material narrowing because “the original claim required
the opening to be ‘toward’ the exterior.” Ans. 4-5. Following the same
reasoning, the Examiner reached a similar conclusion with respect to reissue
claims 21-23. See Ans. 5-9.

3 “In Applicants’ invention of amended Claim 1 an opening opens the
chisel receiver near the expulsion opening for removal of the particles. The
opening extends, starting at the expulsion opening, in a direction of the
chisel insertion opening. WO ‘717 does not teach or suggest Applicants’
opening that extends from the expulsion opening toward in the direction of
the chisel insertion opening.” Response to Non-final office action, filed
January 27, 2009, at 12, in the prosecution of US Application 10/586,428.
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Patent 7,597,402 B2
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Appellants argue that the Examiner erred in comparing the reissue
claims to original dependent claims 10 and 11 instead of original
independent claim 1. Reply Br. 5. According to Appellants, “the
‘materially narrowing’ under Step 3 must be assessed relative to the
surrendered subject matter associated with original independent Claim 1.”
Reply Br. 5 (emphasis omitted). Thus, Appellants take the position that “the
reissue claims modify the ‘opening’ limitations by providing different
structural details,” that is, “adds one or more narrowing modifications
related to the ‘opening’ feature.” App. Br. 18.
In response, the “Examiner finds no instruction in Youman requiring
comparison with the original independent claim.” Ans. 10. According to
the Examiner, “the original dependent claims should also be considered.”
Id.
Appellants’ argument is not persuasive because even using
independent original claim 1 as the basis for the determination as to whether
there has been material narrowing as urged by Appellants, we determine that
the limitations relied upon by Appellants do not constitute material
narrowing. Upon comparing reissue claims 18, 19, and 21-23 with original
claim 1, we agree with Appellants that reissue claims 18, 19, and 21-23
narrow independent original claim 1 by adding limitations from original
claims 10 and 11. See App. Br. 20, 24-29; see also Ans. 11. “[I]f the
patentee modifies the added limitation such that it is broader than the
patented claim yet still materially narrows relative to the original claim, the
recapture rule does not bar issue.” Youman, 679 F.3d at 1347 (emphasis
added). Youman provides guidance on what constitutes “material”
narrowing. Specifically, if the limitation added in the reissue claims, i.e., the
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Application 13/253,540
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limitations of original dependent claims 10 and 11, are not found in the prior
art relied on in the original prosecution, the limitations are “materially”
narrowing. Id. However, in this case, the Examiner specifically rejected
original dependent claims 10 and 11 over the prior art and Appellants have
not come forth with any persuasive evidence to show error in the Examiner’s
findings. Ans. 10-11; see also Non-Final Office Action, mailed September
23, 2008, at 3-4 in the prosecution of US Application 10/586,428. As such,
the limitations of original dependent claims 10 and 11, which were added to
reissue claims 18, 19, and 21-23, are not “materially” narrowing, as
Appellants assert, and hence, do not avoid the recapture rule.
Appellants further argue that, “pending reissue [c]laims 21-23 all add
an ‘expulsion opening’ located ‘at an end of the holding neck that faces
away from the chisel insertion opening.’” Reply Br. 9. According to
Appellants, although an admission was made that an expulsion opening is
known, the claimed location is not part of the admission and as such, “the
‘expulsion opening’ limitations . . . should be considered materially
narrowing.” Id. at 9-10.
We are not persuaded by Appellants’ position because “the material
narrowing must relate to the surrendered subject matter to prevent the
recapture rule from applying.” Youman, 679 F.3d at 1347. In this case, the
surrendered subject matter relates to opening 22 (extending from expulsion
opening 21 toward a direction of chisel insertion opening 24) and not to
expulsion opening 21. See ′402 patent, col. 4, ll. 53-56 and fig. 3. Hence,
because the “narrowing is unrelated to the surrendered subject matter, it is
irrelevant for the purposes of the analysis even if it renders the reissue claim
as a whole intermediate in scope relative to the patented and original
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claims.” Youman, 679 F.3d at 1347-48 (citing North Am. Container, Inc. v.
Plastipak Pkg’g, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005)).
In conclusion, for the foregoing reasons, we sustain the rejection of
claims 18, 19, and 21-23 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.

SUMMARY
The Examiner’s decision to reject claims 18, 19, and 21-23 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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