Hunter Fan CompanyDownload PDFPatent Trials and Appeals BoardOct 26, 20212021002963 (P.T.A.B. Oct. 26, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/527,680 07/31/2019 Jeffrey Butler Cunnane 72312-0810 8498 130686 7590 10/26/2021 McGarry Bair PC 45 Ottawa Ave. SW Suite 700 Grand Rapids, MI 49503 EXAMINER KAUFMAN, JOSEPH A ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 10/26/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patents@mcgarrybair.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY BUTLER CUNNANE ____________ Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 Technology Center 3900 ____________ Before MICHELLE R. OSINSKI, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a request for rehearing under 37 C.F.R. § 41.52 (hereinafter “Request” or “Req. Reh’g”), dated August 30, 2021, of our Decision on Appeal (hereinafter “Decision” or “Dec.”) dated July 1, 2021. In the Decision, we affirmed the Examiner’s rejection of claims 8–39 (hereinafter the “Reissue Claims”) of the application on appeal (hereinafter the “Reissue Application”) under 35 U.S.C. § 251 as attempting to recapture 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hunter Fan Company. Appeal Br. 2. Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 2 subject matter surrendered during prosecution of U.S. Patent 9,719,525 B2 (hereinafter the “Issued Patent”). Rehearing is limited to matters overlooked or misapprehended by the Board in rendering the initial decision. See 37 CFR § 41.79(b)(1). OPINION Appellant first argues that the Board erred by failing to establish that the alleged surrender was directed to overcoming art. Req. Reh’g 2; see also id. at 3–5. Even assuming arguendo that Appellant “must have made [a]mendments or [a]rguments in reliance to define over the art in order to show surrender” as asserted by Appellant (Req. Reh’g 3), our Decision is clear that we found that the Examiner’s Amendment authorized by Appellant was indeed made to define over the prior art (Dec. 11). In particular, our Decision states that “the record evidences that Appellant’s deliberate authorization of the Examiner’s Amendment was made, at least in part, to address outstanding prior art rejections.” Dec. 11. More particularly, the record in this case evidences that there were outstanding prior art rejections. Non-Final Act. (Dec. 17, 2015), 11–14. It was only after the Examiner’s Amendment in the Notice of Allowance (Notice of Allowance (May 18, 2017), 2–3) that the existing prior art rejections were no longer a bar to allowance. Thus, in our view, it is clear in this case that the Examiner’s Amendment was made to define over the prior art. That there may have been other objections and/or non-prior art rejections does not take away from the fact that this case included prior art rejections that needed to be overcome in order for a Notice of Allowance to issue. Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 3 Moreover, the Examiner has explained that the features that related to the “non-art issues raised in the non-final rejection” of claim 1 were not “in the allowed claim 1, nor were the features defined differently by amendment,” so the most reasonable explanation is that “[t]he amendments [to claim 1] were added to define over the art as claim 1 was rejected by anticipation over the Day reference.” Final Act. 8–9. More specifically, the Examiner explained that the only non-art issues relating to claim 1, in particular, were an indefiniteness rejection “around the term ‘short’[, in the phrase “an axially short ceiling mounted enclosure,” being a relative term] . . . and [the phrase] ‘blends in to the architectural style in a manner similar to a common ceiling medallion’” lacking insufficient antecedent basis for the term “the architectural style.” Id. at 8; Non-Final Act. (Dec. 17, 2015), 6. Based on the record before us, we are not persuaded that the limitations added to claim 1 in the Examiner’s Amendment2—which did not relate to 2 The relevant limitations added to claim 1 in the Examiner’s Amendment are those identified by the Examiner in the first step of the recapture rule analysis and include the recitations of (i) the ceiling plate having “a top surface intended to be mounted coplanar to a ceiling”, (ii) the impeller having “a central axis extending downward perpendicular to the ceiling”, (iii) the device having a “plenum chamber comprising first and second fixed sections” and a “repositionable section [that] is configured to move from a first position adjacent to the first fixed section, to a second position adjacent to the second fixed section”, (iv) the device having “a flow guide located at a periphery of the air circulating device relative to the plenum chamber, the flow guide defining an airflow channel, the airflow channel comprising a first opening and a second opening”, and (v) a cambered surface to which a wall jet is fluidly attached so as to cause air to be entrained in the airflow channel being able to be “formed from the first fixed section and the repositionable section, and ambient air is entrained from the first opening of the airflow channel” and able to be “formed from the second fixed section Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 4 the mounted enclosure being axially “short” or blending into “the architectural style”—were made only for purposes of overcoming the indefiniteness rejection of claim 1. It is also unclear on the record before us how each and every relevant limitation added to claim 1 in the Examiner’s Amendment was made only to address (i) drawing objections relating to (a) views not being identified by a Figure Number, (b) reference characters being used to designate more than one part, and (c) reference characters not being described in the Specification (Non-Final Act. (Dec. 17, 2015), 2–4), (ii) the interpretation of certain claim limitations (i.e., “radial air impelling means,” “airflow channeling means,” “airflow detecting means,” “air deflection means,” and “filtration means”) as means-plus-function limitations under 35 U.S.C. § 112(f) (id. at 4–5, 9–10), (iii) claim objections relating to grammatical “informalities” in dependent claims 2, 4, 5, and 9 (id. at 5), or (iv) indefiniteness rejections with respect to dependent claims 2–9 relating to (a) whether the dependent claims further define the invention of claim 1 as required by dependent claims, (b) whether there is sufficient antecedent basis for claim terms appearing in the dependent claims, (c) the use of wording in the dependent claims that may imply certain functionality is optional rather than required, and/or (d) terminology in the dependent claims that comprises “relative” terms (id. at 6–9). In sum, even though there were other objections and non-art related rejections at the time the Examiner’s Amendment was authorized, we are not persuaded that our statement in the and the repositionable section, and ambient air is entrained from the second opening of the airflow channel.” Final Act. 4. Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 5 Decision that “the record evidences that Appellant’s deliberate authorization of the Examiner’s Amendment was made, at least in part, to address outstanding prior art rejections” (Dec. 11) is in error. Appellant secondly argues that “[t]he Board creates a new presumption that is unsupported by the MPEP, statute, or case law, and misapplies In re Clement.” Req. Reh’g 2. More particularly, Appellant suggests that “a detailed analysis of the prosecution history to support a finding of surrender via amendment” is required. Id. at 6. Our Decision in this case noted relevant portions of Clement: The Federal Circuit has explained that “the court may draw inferences from changes in claim scope when other reliable evidence of the patentee’s intent is not available. Clement, 131 F.3d at 1469 (quoting Ball Corp. v. U.S., 729 F.2d 1429, 1436 (Fed. Cir. 1984)). The court explains that “[d]eliberately . . . amending a claim in an effort to overcome a reference strongly suggests that the applicant admits that the scope of the claim before the . . . amendment is unpatentable, but it is not dispositive because other evidence in the prosecution history may indicate the contrary.” Id. Dec. 12. For the reasons described hereinabove, we are not persuaded that the Examiner or the Board failed to follow the relevant portions of Clement by failing to look to the prosecution history for arguments and amendments made in an effort to overcome a prior art rejection. Rather, as described above, the Examiner did look to the prosecution history for arguments and amendments and determined that the Examiner’s Amendment was made to overcome a prior art rejection. Final Act. 8–9. After a thorough consideration of the prosecution history, we agreed with the Examiner. Dec. 11. Consequently, we are not persuaded that our Decision was “inconsistent” with Clement or that we improperly created a new Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 6 presumption unsupported by the law in rendering our decision as alleged by Appellant. Req. Reh’g 7. As to Appellant’s issue with the Board’s statement that “we are not persuaded that the Examiner need undertake any such detailed analysis to support a finding of surrender via amendment,” (Req. Reh’g 9 (quoting Dec. 12)), we maintain that it is not incumbent on the Examiner to provide explicit analysis as to “whether or how [the identified amendments] define over the art” as alleged by Appellant (Appeal Br. 12). Rather, in cases such as this, where there is no evidence to suggest that the scope of the claim before an amendment was patentable, it is enough for the Examiner to point to (i) the deliberate amendment of a claim where there is a prior art rejection and (ii) the resulting allowance after the amendment, as evidence that the scope of the claim before the amendment was unpatentable. See Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1481 (Fed. Cir. 1998) (“an amendment to overcome a prior art rejection evidences an admission that the claim was not patentable”); see also Clement, 131 F.3d at 1469 (quoting Ball Corp. v. U.S., 729 F.2d 1429, 1436 (Fed. Cir. 1984)) (“‘[T]he court may draw inferences from changes in claim scope when other reliable evidence of the patentee’s intent is not available’ . . . . Deliberately . . . amending a claim in an effort to overcome a reference strongly suggests that the applicant admits that the scope of the claim before the . . . amendment is unpatentable.”). Appellant thirdly argues that “[t]he Board [(i)] fails to properly factually distinguish the Example in MPEP § 1412.02(II)(B)(2)(B)), [(ii)] fails to consider MPEP § 1412.02(II)(B)(2)(A), and [(iii)] fails to Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 7 factually distinguish In re Clement.” Req. Reh’g 2. More specifically, with respect to MPEP § 1412.02(II)(B)(2)(B)) (i.e., Example B), Appellant argues that “the present case included a rewrite of the entirety of the claims in the Examiner’s Amendment, such that it is impossible to determine which limitation, if any, were directed to overcoming art, while the Example [(B)] clearly can attribute recapture to limitation D.” Id. at 11; see also id. at 13 (“The Examiner did not merely amend the claims, but completely re-wrote the claims and replaced the old claims.”). Appellant further argues that “Example (B) clearly states that the Amendment was made to obviate a rejection, while that fact has not been established in the present matter beyond that a rejection existed.” Id. at 12. As described in more detail above, we have considered the limitations added to claim 1 in the Examiner’s Amendment and are persuaded that the limitations were added to define over the prior art. The Examiner made the same determination. See Final Act. 8–9. As to the added limitations amounting to a rewrite of the entirety of claim 1, rather than merely comprising the addition of a single limitation, we do not see where the fact that there were many added limitations that were found to be directed to overcoming the art in this case, rather than a single added limitation found to be directed to overcoming the art, necessarily results in a different outcome than Example B. Next, more specifically with respect to MPEP § 1412.02(II)(B)(2)(A) (i.e., Example A), Appellant asserts that “Example (A) provides that ‘boiler plate’ language fails to amount to surrender to establish recapture.” Req. Reh’g 12; see also id. at 17 (reiterating the same argument). We note as an Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 8 initial matter that Example (A) in the MPEP is directed to “argument without amendment.” MPEP § 1412.02(II)(B)(2)(A). The instant case clearly involves an amendment—namely, the Examiner’s Amendment in the Notice of Allowance—such that Example (A) is inapplicable to the case at hand, and that is why we did not consider it. To the extent that Appellant is contending that the purportedly “boiler plate” language of the Examiner, in which the Examiner notes that the authorization for the Examiner’s Amendment was made in an interview (Final Act. 5), is insufficient to support a finding of surrender, we note that the identified language is simply being relied upon as evidence that Appellant authorized the Examiner’s Amendment. The finding that Appellant authorized the Examiner’s Amendment is supported by a preponderance of the evidence and has not been challenged adequately by Appellant. Next, more specifically with respect to the Board’s asserted failure to “factually distinguish In re Clement upon which the Board also relies,” Appellant argues that “Clement provided a full review of the prosecution history at 1467–1468, discussing the particular details of the prosecution as they relate to amending and arguing over the art.” Req. Reh’g 12. Clement explains that “[t]he first step in applying the recapture rule is to determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims” and “[t]he second step is to determine whether the broader aspects of the reissue claims relate to surrendered subject matter.” Clement, 131 F.3d at 1468–69. As part of the second step, Clement explains that “[t]o determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 9 made in an effort to overcome a prior art rejection.” Id. at 1469 (citing Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995–96 (Fed. Cir. 1993); Ball, 729 F.2d at 1436. Our Decision comports with In re Clement because our Decision clearly explained how the first and second steps of the recapture rule were applied. Dec. 6–15. We also discussed the prosecution history, including relevant rejections and amendments. Id. at 7–8, 10–12. Fourth, Appellant argues that “[t]he Board fails to consider the evidence provided by the Appellant.” Req. Reh’g 2. More specifically, Appellant argues that “the Board fails to consider the other evidence in the prosecution history indicating the contrary [i.e., that the Examiner’s Amendment was not made to overcome a reference], such as the other existing objections and rejections which were not in view of the art, also required under Clement.” Id. at 7; see also id. at 9 (“The [Appellant] notes that there is plenty of other evidence in the prosecution history, including outstanding objections to the Drawings, objections to the Specification, objections to the Claims, and rejections under 35 U.S.C. § 112, all of which were identified in the review of the prosecution history provided by the Appellant in the original Appeal Brief.”); see also id. at 13 (“Every claim prior to the Examiner’s Amendment had one or more formality objections or rejections under 35 USC 112 not to the art.”) As described above, the Examiner considered the other existing objections and rejections which were not based on prior art (Final Act. 8–9), but did not find such evidence to be persuasive to indicate that the inference to be drawn from the deliberate amendment of the claim to overcome a reference (in light of the prior art rejection) was inappropriate. The Board agreed with the Examiner’s Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 10 assessment in the Decision, and we discern no error in our agreement with the Examiner. Dec. 11. We have also considered Appellant’s other “evidence contrary to a finding of surrender,” namely, its contention that “[t]he response to the initial office action did not address any of the bases of the 35 USC 102 and 103 rejections, but rather addressed the differences in concept between the invention disclosure and the Day reference, rather than any difference between the claims and Day.” Req. Reh’g 13; see also id. at 16 (“None of the amendments made to claim 1 in the original prosecution relate to the distinctions argued over Day. Rather, the original Applicant is discussing the differences in inventive concepts between the original Patent and the Day reference, not distinguishing claim limitations over the art.”). In our view, commentary regarding “differences in concept” (id.at 13) between Appellant’s invention and the cited prior art help support that the later Examiner’s Amendment was made in an effort to overcome a prior art rejection based on Day. Our Decision noted that “much of the language recited in claim 1 of the Examiner’s Amendment finds its basis in Appellant’s March 17, 2016 Amendment” in response to the initial Office Action. Dec. 11. Our Decision also explained that arguments distinguishing even the concept of Day from the concept of Appellant help support a conclusion that the later Examiner’s Amendment pertaining to the inventive device “being mounted coplanar to the ceiling and the device having structure, including oppositely disposed openings, that enables the reversal of entrained airflow” “were made in an effort to overcome the prior art rejection based on Day.” Id. at 11–12. Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 11 In any event, our Decision ultimately did not rely on Appellant’s discussion of the Day reference in the March 17, 2016 Amendment in finding surrender. Id. at 11. Even prior to considering Appellant’s discussion of the Day reference in the March 17, 2016 Amendment, we maintained that the Examiner adequately supported that the Examiner’s Amendment accompanying the Notice of Allowance “evinces a deliberate decision by Appellant to intentionally surrender subject matter, via the authorized claim amendment, in an effort to obtain allowance of the claims” and “[m]ore specifically, the record evidences that Appellant’s deliberate authorization of the Examiner’s Amendment was made, at least in part, to address outstanding prior art rejections.” Id. We have also considered Appellant’s additional “evidence contrary to a finding of surrender.” Req. Reh’g 13. In particular, Appellant argues that its “Original Filing and the Response to the Non-Final Rejection needed to be resubmitted multiple times because of informalities.” Id. We are not persuaded that the fact that Appellant had to resubmit its written response multiple times has any bearing on whether or not the ultimate Examiner’s Amendment authorized by Appellant to overcome the prior art rejection resulted in surrender of subject matter. We have also considered Appellant’s contention that “[t]he matter was prosecuted pro se, which speaks to the fallibility of ascribing [Appellant’s] intent to recapture.” Id. Again, as recognized by Clement, because of the difficulty in evidencing intent, “the court may draw inferences from changes in claim scope.” Clement, 131 F.3d at 1469 (quoting Ball, 729 F.2d at 1436)). In our view, for the reasons herein we do not see error in the inference that the changes in claim scope Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 12 made via the authorized Examiner’s Amendment were made to overcome prior art. That Appellant is prosecuting the application pro se does not change the reasonableness of such an inference. With respect to even further “evidence contrary to a finding of surrender,” Appellant argues that although “the scope of the issued claims is different than that of the original claims, the amending was done by the Examiner and not by action of the [Appellant].” Req. Reh’g 13. We discussed this issue in detail in our Decision, explaining that “[i]t is applicant’s deliberate decision to amend the claim, not the origin of the claim amendment, which is relevant to the question of intentional surrender.” Dec. 10. We also pointed to a statement in the MPEP that an amendment, even without argument, can result in surrender “whether the addition of limitation D [via amendment] in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.” MPEP § 1412.02(II)(B)(2)(B) (cited at Dec. 9); see also MPEP § 1412.02(II)(B)(2)(C) (“Applicant is bound only by applicant’s revision of the application claims (including examiner’s amendments authorized by applicant).”). Our Decision further explained that the evidence in the record supported that “the claim amendment made in the Examiner’s Amendment was authorized by and, therefore, legally binding on Appellant.” Dec. 10. Appellant’s fifth argument is that “[w]hen the original prosecution history is fully considered in view of the art, there cannot be any surrender by the original Applicant.” Req. Reh’g 2. In support of this argument, Appellant provides a list of Appellant’s submissions in the prosecution Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 13 history, along with accompanying arguments. Id. at 15. Our Decision is clearly based on the Examiner’s Amendment authorized by Appellant. Dec. 11, 14–15. Thus, we focus on the portion of the Request relating to the Examiner’s Amendment. Appellant reiterates its argument that Appellant “has made no comment, and there is no stated reliance or evidence thereof that [Appellant] relied on any of those claims, or limitations thereof, to define over the art so as to give rise to surrender.” Req. Reh’g 17. “Appellant submits that no portion of the Notice of Allowance gives rise to a surrender generating limitation.” Id. These are the same arguments that we already considered in our Decision. Dec. 8–9. For the same reasons in the Decision and further explained herein, we maintain our determination that “the record evidences that Appellant’s deliberate authorization of the Examiner’s Amendment was made, at least in part, to address outstanding prior art rejections.” Id. at 10–11. Appellant further argues “it was the Examiner who relied on the aforementioned limitations [i.e., the limitations mentioned in the Reasons for Allowance], alone or in combination, to allow the claims. However, there is no submission, statement, or other evidence submitted by the Applicant in agreement with or supporting the Examiner’s statement.” Req. Reh’g 18. Appellant continues that it “submits that no portion of the Notice of Allowance, or the claims rewritten therein by the Examiner, gives rise to a surrender generating limitation by the original Applicant.” Id. Appellant’s argument is similar to one already considered in our Decision. Dec. 13–14. Although we agree that an Examiner’s Reasons for Allowance cannot give rise to a surrender in accordance Ex Parte Yamaguchi (Req. Reh’g 18), our Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 14 Decision turned on “Appellant affirmatively t[aking] action in authorizing the Examiner’s Amendment” and it was “the affirmative act of the amendment itself, even if completed by way of Examiner’s Amendment with authorization by Appellant (rather than directly by Appellant), that has resulted in the surrender in the instant case.” Dec. 14. Appellant provides no relevant legal authority to support that an authorized Examiner’s Amendment cannot give rise to surrender unless there is an accompanying submission or statement. For the foregoing reasons, we are unpersuaded that the Board misapprehended or overlooked Appellant’s arguments or otherwise erred in sustaining the Examiner’s determination that Reissue Claims 8–39 of the Reissue Application constitute an attempt to recapture subject matter that Appellant intentionally surrendered during prosecution of the Issued Patent. Accordingly, Appellant’s Request is denied with respect to our making any modification to the Decision. CONCLUSION Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 8–39 251 Improper Recapture of Surrendered Subject Matter 8–39 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–39 251 Improper Recapture of Surrendered Subject Matter 8–39 Appeal 2021-002963 Application 16/527,680 Patent 9,719,525 B2 15 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). DENIED Copy with citationCopy as parenthetical citation