Nokia Corporation

Patent Trials and Appeals Board

Nov 12, 2020

14630337 - (D) (P.T.A.B. Nov. 12, 2020)

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.
14/630,337 02/24/2015 Marko H. Kokko 39700-846RI2US/
NC35888US
1207
12358 7590 11/12/2020
Mintz Levin/Nokia Technologies Oy
One Financial Center
Boston, MA 02111
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
11/12/2020 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):
IPDocketingBOS@mintz.com
IPFileroomBOS@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKO H. KOKKO
Appeal 2020-005992
Application 14/630,3371
Patent 7,627,533 B2
Technology Center 3900
Before ALLEN R. MacDONALD, ERIC B. CHEN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL

1 Filed February 24, 2015, as a continuation application of U.S. Patent
Application No. 13/309,506 filed on December 1, 2011, seeking to reissue
U.S. Patent 7,627,533 B2, issued December 1, 2009, based on Application
10/681,393, filed October 8, 2003. The Examiner determined that “[t]he
instant reissue is being treated as a continuation reissue application (rather
than as a continuation of a reissue, i.e. a Bauman type continuation
application).” Reissue Final Act. 2.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

2

STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 40–85, which are all of the claims pending in the
application. Issued claims 1–39 have been cancelled and reissue claims 86–
93 are treated as cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
SUMMARY OF THE KEY POINTS OF THE DECISION
The Examiner’s rejection of claims 40–85 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
affirmed.
The Examiner’s rejections of reissue claims 40–85 under 35 U.S.C.
§ 102(e) and § 103(a) are affirmed.
The Examiner’s rejection of claims 40–85 under 35 U.S.C. § 251 as
being an improper recapture of surrendered subject matter is affirmed.
As to the recapture rejection, Appellant primarily disputes the
recapture by asserting that reissue claims 40–85 include limitations that are
materially narrower than the original claims presented in the ’533 patent.
Although not argued by Appellant, at Section C.5.e. infra, we review
whether claims 40–85 include an overlooked aspect of the invention. We
discuss that a fundamental requirement is for every reissue claim to comply
with the original patent (“same invention”) requirement of § 251. Therefore,
the original patent requirement applies to any analysis of overlooked aspects
of the invention. We determine that claims 40–85 fail to meet the original

2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Nokia Corporation as the real party in
interest. Appeal Br. 2.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

3

patent requirement. Thus, claims 40–85 cannot be an overlooked aspect of
the invention.
The Examiner’s rejection of claims 41, 42, 52–69, 71, 76, 81, 83, and
84 under 35 U.S.C. § 112, second paragraph, as indefinite is affirmed pro
forma.
The Examiner’s rejection of claims 40–85 under 35 U.S.C. § 251 as
being based on a defective reissue oath is affirmed pro forma.
STATUS OF THE CLAIMS
Patented claims 1–39 have been cancelled.
Reissue claims 40–85 (as numbered in Appellant’s November 12,
2019 amendment) are pending. After the non-final rejection of reissue
claims 40–93 (as then pending and numbered) on January 12, 2018,
Appellant repeatedly cancelled claims from the 40–93 sequence of claims
and replaced all pending claims with a newly numbered set of sequential
claims. Thus, for example, reissue claim 93 (as filed) is now reissue claim
85 (as appealed).
Reissue claims 86–93 are treated as cancelled. Appellant repeatedly
stated that a newly numbered sequence of claims replaced the prior
sequence. However, Appellant did not formally state that any prior claim
whose number did not appear in the new sequence was cancelled.
Therefore, the Examiner treated claims 86–93 (not in the newest sequence)
as still pending, and prepared numerous rejections thereof. However, we
deem reissue claims 86–93 to be cancelled, and all rejections of reissue
claims 86–93 that appear in the Final Action and the Examiner’s Answer are
moot.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

4

Only reissue claims 40–85 are pending in the appeal before this panel.
TECHNOLOGY
The application relates to “concealing the true identity of a user in a
communications system.” ’533 patent, Abstract.
ILLUSTRATIVE CLAIM
Claim 40 is illustrative and reproduced below with certain limitations
at issue emphasized:
40. A method comprising:
receiving, from a first user equipment, a first request for
one or more virtual identifiers for the first user equipment;
establishing, in at least one of the first user equipment and
a service network, the one or more virtual identifiers for the first
user equipment;
linking, by the service network, the one or more virtual
identifiers for the first user equipment to an identifier of the first
user equipment;
receiving, from the first user equipment, a second request
to establish a communication connection from the first user
equipment to a second user equipment, and wherein the
communication connection is to be established based at least on
the virtual identifier;
matching, based at least on a database of virtual identifiers
linked to identifiers in the service network, the virtual identifier
by at least matching the virtual identifier to the identifier of the
first user equipment;
and establishing, by the service network, the requested
communication connection from the first user equipment to the
second user equipment, in response to the virtual identifier
being matched to the identifier of the first user equipment.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

5

REFERENCES
The Examiner relies on the following prior art references:
Name Number Date
Levosky US 2002/0087641 A1 July 4, 2002
MacIntosh US 2002/0138581 A1 Sept. 26, 2002
Malik US 7,155,608 B1 Dec. 26, 2006
Jarvinen WO 00/76231 A1 Dec. 14, 2000
REJECTIONS
A.
Claims 40–85 stand rejected under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement.3 Final
Act. 6–7. The rejection sets forth a first rejection covering claims 40–85, a
second rejection covering claims 58 and 63, and a third rejection covering
claim 85.
Appellant separately argues claims 40, 58, and 85. Appellant does not
argue separate patentability for claims 41–57 and 59–84. Appeal Br. 17–21.
We select claim 40 as representative for the first rejection covering claims
40–85. We select claim 58 as representative for the second rejection
covering claims 58 and 63. Except for our ultimate decision, we do not
address the merits of this § 112, first paragraph, rejection of claims 41–57
and 59–84 further herein.
B.
Claims 40–43, 45, 46, 50–54, 58, 60, 63, 65, 66, 70, 71, 73–76, 78–
81, and 83–85 stand rejected under 35 U.S.C. § 102(e) as anticipated by
Levosky. Final Act. 13–46.

3 The Examiner withdrew a written description rejection for claim 52
concerning the “confirmation” limitation. Ans. 59.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

6

We select claim 40 as the representative claim for this rejection.
Appellant does not argue separate patentability for claims 41–43, 45, 46, 50–
54, 58, 60, 63, 65, 66, 70, 71, 73–76, 78–81, and 83–85. Appeal Br. 21–23.
Except for our ultimate decision, we do not address the merits of the § 102
rejection of claims 41–43, 45, 46, 50–54, 58, 60, 63, 65, 66, 70, 71, 73–76,
78–81, and 83–85 further herein.
C.
Claims 40–85 stand rejected under 35 U.S.C. § 251 for recapturing
surrendered subject matter. Final Act. 9–12.
We select claims 40 and 58 as representative. Appellant does not
argue separate patentability for claims 41–57 and 59–85. Appeal Br. 15–17.
Except for our ultimate decision, we do not address the merits of this § 251
rejection of claims 41–57 and 59–85 further herein.
D.
Claims 44 and 64 stand rejected under 35 U.S.C. § 103(a) as obvious
over Levosky and Jarvinen. Final Act. 47–48.
Claims 47, 48, 55, 56, 59, 61, 67, 68, 72, 77, and 82 stand rejected
under 35 U.S.C. § 103(a) as obvious over Levosky and MacIntosh. Final
Act. 49–57.
Claims 49, 57, 62, and 69 stand rejected under 35 U.S.C. § 103(a) as
obvious over Levosky and Malik. Final Act. 58–60.
To the extent that Appellant discusses the § 103 rejections of claims
44, 47, 48, 49, 55–57, 59, 61, 62, 64, 67–69, 72, 77, and 82, Appellant
merely refers by dependency to the arguments directed to claim 40. Appeal
Br. 23. Such a referenced argument (or repeated argument) is not an
argument for “separate patentability.” Thus, the rejections of these claims
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

7

turn on our decision as to claim 40. Except for our ultimate decision, we do
not address the merits of the § 103 rejections of claims 44, 47, 48, 49, 55–
57, 59, 61, 62, 64, 67–69, 72, 77, and 82 further herein.
E.
Claims 41, 42, 52–69, 71, 76, 81, 83, and 84 stand rejected under 35
U.S.C. § 112, second paragraph as indefinite. Final Act. 7–8.
Appellant’s Appeal Brief does not present arguments for the § 112,
second paragraph, indefiniteness rejection. Appeal Br. 4 n.2; Reply Br. 3
n.4.
Instead, Appellant states that “[r]eview is not requested at this time”
for this rejection. Appeal Br. 4 n.2. However, no authority exist which
permits Appellant to toll the appeal of a select rejections until after the
appropriate time period provided by 37 C.F.R. § 41.31(a). An appeal “is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by amendment.” 37 C.F.R. § 41.31(c). Further, “[a]n examiner’s
answer is deemed to incorporate all of the grounds of rejection set forth in
the Office action from which the appeal is taken.” 37 C.F.R. § 41.39(a)(1).
Thus, we affirm pro forma the Examiner’s § 112, second paragraph,
rejection. Except for our ultimate decision, the merits of this rejection are
not addressed further herein.

F.
Claims 40–85 stand rejected under 35 U.S.C. § 251 for being based on
a defective reissue declaration. Final Act. 3 and 9.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

8

Appellant’s Appeal Brief does not present arguments for the § 251
defective reissue declaration rejection. Appeal Br. 4 n.1 (mistakenly listed
as under 35 U.S.C. § 112(b)); Reply Br. 4 n.3.
Instead, Appellant states that “[r]eview is not requested at this time”
for this rejection. Appeal Br. 4 n.1. However, no authority exist which
permits Appellant to toll the appeal of a select rejections until after the
appropriate time period provided by 37 C.F.R. § 41.31(a). An appeal “is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by amendment.” 37 C.F.R. § 41.31(c). Further, “[a]n examiner’s
answer is deemed to incorporate all of the grounds of rejection set forth in
the Office action from which the appeal is taken.” 37 C.F.R. § 41.39(a)(1).
Thus, we affirm pro forma the Examiner’s § 251 defective reissue
declaration rejection. Except for our ultimate decision, the merits of this
rejection are not addressed further herein.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments that the Examiner has erred.
A. § 112 First Paragraph
A.1.
The “written description” requirement implements the principle
that a patent must describe the technology that is sought to be
patented; the requirement serves both to satisfy the inventor’s
obligation to disclose the technologic knowledge upon which the
patent is based, and to demonstrate that the patentee was in
possession of the invention that is claimed.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

9

An applicant shows possession of the claimed invention by
describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams,
and formulas that fully set forth the claimed invention.
Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997).
MPEP § 2163 I (9th Ed., Rev. 10.2019, June 2020).
A.2.
The Examiner rejects claims 40, 58, and 85 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
· Claims 40, 50, 52, 58, 63, 70, 71, 75, 76, 80, 81, 85, 88 and 89,
there is no support found for the claimed concept of matching
the user1’s virtual identifier to user1’s equipment identifier
and establishing this user1-to-user2 connection in response to
such matching. The fact that the user1’s virtual identifier is
linked to user1’s equipment characteristic identifier is
described in the patent (US Patent 7,627,533 at 4:31-35) as
well as the fact that “the virtual identifier . . . is then used,
when concealing the true identity . . . when establishing a
connection” (at 4: 36-40), but no support can be found for
matching as a basis for establishing this user1-to-user2
connection. It is noted that support is present for matching a
virtual identifier to a characteristic identifier in the context of
a request by user2 for connecting to anonymous user1 (at
5:11–19).
. . .
· Claims 58 and 63, there is no support for the number(s) to
identify a corresponding virtual identifier(s).
· Claim 85, there is no support for a reply communication (from
user2 to user1) to use a different virtual identifier than that
used for the prior communication (from user1 to user2).
Final Act. 6–7 (emphasis added).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

10

A.3.a.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 40 under 35 U.S.C. § 112, first paragraph.
[T]he Examiner alleges that claims 40, 50, 52, 58, 63, 70-
71, 75-76, 80-81, 85, and 88-89 lack support because the
specification of the ’533 Patent describes using a virtual
identifier of a first user equipment to establish a communication
connection from a second user equipment to the first user
equipment but not from the first user equipment to the second
user equipment. (Office Action, at p. 6-7). Appellant
respectfully disagrees. At the outset, the specification of the ’533
Patent states that “[t]he virtual identifier of the first user
equipment 100 is then used, when concealing the true identity of
the user of the first user equipment 100 is required, for example
when establishing a connection between the first and the second
user equipment 100, 102.” (Specification, at 4:36-40, emphasis
added). Thus, contrary to the Examiner’s assertion, the
specification of the ’533 Patent expressly supports the limitation
set forth in 40, 50, 52, 58, 63, 70-71, 75-76, 80-81, 85, and 88-
89 in which the virtual identifier of the first user equipment is
used to establish a communication connection from the first user
equipment to the second user equipment.
Appeal Br. 18.
Appellant’s argument is not persuasive because Appellant does not
address the rejection made by the Examiner. Appellant’s argument only
addresses generic “establishing a connection between the first and the
second user equipment,” not the specific matching based version as claimed
and rejected. The Examiner’s rejection highlights concern with the specific
claim requirement of “matching as a basis for establishing this user1-to-
user2 connection.” We agree with the Examiner that the Specification
provides “no support” for this specific limitation. Final Act. 6–7.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

11

A.3.b.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 58 under 35 U.S.C. § 112, first paragraph.
The specification of the ’533 Patent points out that “[t]he
IN system 124 includes a database comprising a list of virtual
identifiers, such as phone numbers of given format. The first
numbers of the virtual phone number may for example always be
the same particular numbers for all the virtual identifiers, for
instance.” (Specification, at 4:64-5:1). This disclosure expressly
supports the limitation set forth in claims 58 and 63 that a virtual
identifier includes one or more numbers. Moreover, this
disclosure expressly supports the limitation that at least one of
the numbers identifies the virtual identifier. Thus, the
specification of the ’533 Patent expressly supports the limitation
set forth in claims 58 and 63 in which each virtual identifier
includes one or more numbers and at least one number identifies
a corresponding virtual identifier.
Appeal Br. 19 (emphasis added).
Appellant’s argument is not persuasive because Appellant does not
address the rejection made by the Examiner. Appellant’s argument only
addresses generic identifying a number as a virtual identifier, not the
specific identifying a “corresponding” virtual identifier as claimed and
rejected. The Examiner’s rejection highlights concern with the specific
claim requirement of “identifies a corresponding one of the one or more
virtual identifiers.” We agree with the Examiner that the Specification
provides “no support” for this specific limitation. Final Act. 7.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

12

A.3.c.
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 85 under 35 U.S.C. § 112, first paragraph.
The specification of the ’533 Patent expressly states that
“the holder of the first user equipment UE1 has already a set of
virtual identifiers to choose from in the first user equipment
UE1,” (Specification, at 8:28-30). This disclosure indicates that
a first user equipment can be associated with a set of virtual
identifiers is support for the limitation that a second user
equipment can use a different virtual identifier to establish a
communication connection with the first user equipment than the
virtual identifier used to establish a previous communication
connection. As such, the specification of the ’533 Patent
supports the limitations set forth in claim 85.
Appeal Br. 20 (emphasis added).
Appellant’s argument is persuasive.
B. § 102(e) – Claim 40
B.1.
Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 40 under 35 U.S.C. § 102(e).
As set forth in claim 40, the first user equipment can use a
virtual identifier of the first user equipment to initiate
communication with the second user equipment. For example,
the first user equipment can use an alias phone number or an alias
email address to establish a communication connection with the
second user equipment. The second user equipment can
subsequently respond to the first user equipment using the alias
phone number and/or email address. This ability for the first user
equipment is able to use a virtual identifier of the first user
equipment to initiate communication with the second user
equipment is absent from Levosky. Instead, Levosky only
permits the second user equipment to use the virtual identifier of
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

13

the first user equipment to initiate communication with the first
user equipment.
To the extent that Levosky describes a form of an alias, a
Levosky user may request an alias email address but that
Levosky user cannot send outgoing emails under that alias email
address. Instead, the Levosky user is only able to distribute that
alias email address such that other users may send incoming
emails to that alias email address. As Levosky readily points out,
[the Levosky] system operates only under
conditions that the sender’s Email address is
transmitted to the recipient by non-Email means.
The sender may give his Email address to a recipient
by letter, FAX, telephone, or by including it in a
form contained within a WEB site requesting the
sender’s Email address. Thus, the communication
shown in FIG. 2 is unidirectional only as between
the Alias Email Server and the receiver Email
client. That is, the receiver Email client 12, may
communicate Email messages to the Alias Email
Server 100 by this method, but not vice-versa.
(Levosky, at para. [0040], emphasis added). Thus, unlike various
implementations of the claimed subject matter, Levosky does not
permit the first user equipment to use[] a virtual identifier of the
first user equipment to establish a communication connection
with the second user equipment.
To the extent that Levosky allows the user equipment
linked to an alias email address to reply to an email sent to that
alias email address, the user equipment does not in fact send a
request to establish a communication connection that includes
the alias email address that should be used for the communication
connection. Instead, Levosky requires inserting “a special return
code . . . in the ‘reply-to’ portion of the sender’s Email ‘header’
information” such that the reply email from the user equipment
is routed to Levosky’s Alias Email server, which then replaces
the user equipment’s actual email address with the alias email
address used to send the original email. (Levosky, at para.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

14

[0054]-[0058]). As such, Levosky does not enable the first user
equipment to include, in a request to establish a communication
connection with a second user equipment, a virtual identifier
associated with the first user equipment such that the
communication connection with the second user equipment is
established using that virtual identifier.
Appeal Br. 21–23 (emphasis and formatting added).
B.2.
The Examiner responds to Appellant’s arguments as follows:
Levosky teaches that an anonymous user [i.e., the first
user] may reply to a received email [from the second user]
therefore meeting the claimed “receiving . . . a request to
establish a . . . connection” step quoted above . . . The delivery
of this email reply [from first user to second user] meets the
“establishing . . . the requested connection . . . to the second user
equipment” step quoted above. Levosky teaches that this reply
goes through the alias email server where the replying user’s
actual email address is stripped and the replying user’s alias
email address is used instead to preserve her privacy. This meets
the “matching” step quoted above and clarifies that the
establishing step is done “in response to the virtual identifier
being matched to the identifier of the first user equipment”
limitation quoted above.
“The invention allows for the user to reply to
Emails, while still keeping his or her physical Email
address from the sender[.]” (Levosky at ¶ 0053).
“[T]he database may contain more than one alias
user record corresponding to the same user name[.]”
(Levosky at ¶ 0047).
“[W]hen the user clicks on ‘send’ in his Email client
program, the reply is sent to the Alias Email server
instead of going directly back to the recipient. Next,
the Alias Email server strips all information which
could identify the user’s physical Email address,
and the user’s Alias Email address originally given
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

15

to the recipient [is] used as the new ‘replied-from’
address. Thus the privacy of the user’s real Email
address is preserved[.]” (Levosky at ¶ 0058).
“The Alias Email server also takes the further step
of removing the information portion (memo, dates
and times, etc.) from the body of the ‘replied-to’
Email, before sending it back to the recipient.
Communication may thus go ‘back and forth’ a
number of times while preserving the ‘alias’ form
of user’s email address[.]” (Levosky at ¶ 0060).
Ans. 73–74.
B.3.
We are unpersuaded by Appellant’s arguments. First, the “initiate”
argument is not commensurate with the scope of the claim language. We do
not find an “initiate” requirement in claim 40. Contrary to Appellant’s
argument, claim 40 does not use the term “initiate,” which generally means
to begin, set going, or originate.4 Rather, claim 40 uses the term “establish”
which means “to found, institute, build, or bring into being on a firm or
stable basis” (emphasis added).5 We are unable to find any indication that
these terms are considered to be synonyms. In simple terms, “initiate”
speaks to at best the first step in the overall act of “establishing.”
Appellant’s claim 40 does not require that the argued use of the virtual
identifier be to initiate (used to start the establishing). Rather, claim 40
requires that “the communication connection is to be established based at
least on the virtual identifier” (used at some time during the establishing).

4 The Random House Dictionary Of The English Language (2d Ed.
Unabridged; 1987).
5 Id.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

16

Second, we disagree with Appellant’s argument that “unlike various
implementations of the claimed subject matter, Levosky does not permit the
first user equipment to use[] a virtual identifier of the first user equipment to
establish a communication connection with the second user equipment.” We
agree with Appellant that the initial 1st user to 2nd user contact in Levosky is
limited to distributing the alias email address by letter, FAX, telephone, etc.,
but not by email. Appellant’s Specification discloses the same as an
embodiment at column 8, lines 15–42. However, we disagree with
Appellant that “Levosky does not permit the first user equipment to use[] a
virtual identifier of the first user equipment to establish a communication
connection with the second user equipment.” We agree with the Examiner
that in Levosky, the invention allows for the 1st user to reply via email to an
email from the 2nd user. Levosky ¶ 53. That is, Levosky provides an initial
non-email contact from the 1st user to the 2nd user, followed by an email
contact from the 2nd user to the 1st user, and that followed in turn by an email
contact from the 1st user to the 2nd user. Levosky ¶¶ 58, 60.
Further, as to claim 40, Appellant appears to construe
receiving, from the first user equipment, a second request to
establish a communication connection from the first user
equipment to a second user equipment, and wherein the
communication connection is to be established based at least on
the virtual identifier
as requiring that the 1st user initiate the communication using the virtual
identifier. We do not find the claim to be so limited. Rather, we determine
that the language only requires that the “virtual identifier” be used at least at
some point in establishing the connection from the first user equipment to a
second user equipment. We agree with the Examiner that this is disclosed in
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

17

Levosky as “the user’s Alias Email address originally given to the recipient
[is] used as the new ‘replied-from’ address.” Levosky ¶ 58.
Third, as to Appellant’s “special return code” argument, we find
nothing in claim 40 that precludes Levosky’s special return code from being
the request to the Alias Email server to complete establishment of a
communication connection from the first user equipment to a second user
equipment based at least on the virtual identifier (disclosed in Levosky as
the user’s Alias Email address).
We agree with the Examiner’s determination that Levosky anticipates
claim 40.
C. Section 251 – Recapture
C.1. The Statute
The reissue statute expressly permits a patentee to correct an “error”
thus permitting patentee to obtain reissue claims broader than the originally
issued patent claims at any time within two (2) years from the date the
original patent issues. More particularly, 35 U.S.C. § 251(a), (d), provide in
pertinent part:
(a) Whenever any patent is, through error, deemed wholly or
partly inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the patentee claiming
more or less than he had a right to claim in the patent, the
Director shall, on the surrender of such patent and the payment
of the fee required by law, reissue the patent for the invention
disclosed in the original patent, and in accordance with a new
and amended application, for the unexpired part of the term of
the original patent. No new matter shall be introduced into the
application for reissue.
. . .
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

18

(d) No reissued patent shall be granted enlarging the scope of
the claims of the original patent unless applied for within two
years from the grant of the original patent.

C.2. Recapture Principles
C.2.a. Recapture is not an error within the
meaning of 35 U.S.C. § 251
Under what has become known as the “recapture rule,” a patentee
cannot regain through reissue subject matter that the patentee surrendered in
an effort to obtain allowance of claims in the patent sought to be reissued.
In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
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 from Haliczer v. United States,
356 F.2d 541, 545 (Ct. Cl. 1966).6 See also Hester Indus., Inc. v. Stein, Inc.,
142 F.3d 1472, 1480 (Fed. Cir. 1998).
C.2.b. The Recapture Rule
Application of the recapture rule is a three step process.
The first step is to determine whether and in what ‘aspect’ the

6 Haliczer is binding precedent. See S. Corp. v. United States, 690 F.2d
1368 (Fed. Cir. 1982) (en banc) (noting that decisions of the former U.S.
Court of Customs and Patent Appeals and former U.S. Court of Claims
decisions are binding precedent).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

19

reissue claims are broader than the patent claims. A reissue claim
that deletes a limitation or element from the patent claims is
broader with respect to the modified limitation. Next, the court
must determine whether the broader aspects of the reissue claims
relate to surrendered subject matter. To determine whether an
applicant surrendered particular subject matter, we look to the
prosecution history for arguments and changes to the claims
made in an effort to overcome a prior art rejection.
. . . In [the] final step, the court must determine whether
the surrendered subject matter has crept into the reissue claim. In
discussing this third step, it is important to distinguish among the
original claims (i.e., the claims before the surrender), the
patented claims (i.e., the claims allowed after surrender), and the
reissue claims. Violation of the rule against recapture may be
avoided under this final step of the analysis if the reissue claims
“materially narrow” the claims relative to the original claims
such that full or substantial recapture of the subject matter
surrendered during prosecution is avoided.
To avoid violation of the rule against recapture in this way,
the narrowing must relate to the subject matter surrendered
during the original prosecution (i.e., the applicant cannot
recapture the full scope of what was surrendered).
In re Mostafazadeh, 643 F.3d 1353, 1358–59 (Fed. Cir. 2011) (citations
omitted) (emphasis added).
C.2.c. Objective Observer
It is clear that in determining whether “surrender” of
subject matter has occurred, the proper inquiry is whether an
objective observer viewing the prosecution history would
conclude that the purpose of the patentee’s amendment or
argument was to overcome prior art and secure the patent. . . .
Thus, if the objective public observer can discern a surrender of
subject matter during the prosecution of an original patent in
order to overcome prior art and obtain the patent, then the
recapture rule should prevent the reissuing of that patent to claim
the surrendered subject matter.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

20

Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006) (citations
and footnote omitted) (emphasis added).
C.2.d. Overlooked Aspect of the Invention
The recapture rule does not apply to reissue claims
directed to “overlooked aspects” such as “additional
inventions/embodiments/species not originally claimed.”
Mostafazadeh, 643 F.3d at 1360. Overlooked aspects, however,
are not merely incidental features of the originally claimed
invention. See id. Rather, they are distinct elements which “were
never claimed and thus never surrendered.” [In re] Youman, 679
F.3d [1335,] 1347 [(Fed. Cir. 2012)].
In re Gen. Elec. Co., 789 F. App’x 857, 860 (Fed. Cir. 2019) (unpublished).
In General Electric, the Federal Circuit determined a “subcombination is not
an overlooked aspect of the invention.” 789 F. App’x at 861 (emphasis
added).
C.3. Original Patent (“Same Invention”) Requirement
The original patent requirement is well-established, being
recognized in the reissue statute and longstanding Supreme
Court jurisprudence. . . . Supreme Court cases have recognized
this requirement for more than 150 years. . . . The Supreme
Court’s definitive explanation of the original patent requirement
appears in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon
Chemicals Corp., 315 U.S. 668, 62 S.Ct. 839, 86 L.Ed. 1105
(1942).
Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358–59 (Fed.
Cir. 2014) (additional citations omitted).
The Supreme Court’s articulation of the “same invention” test in
Industrial Chemicals was in the context of 35 U.S.C. § 64, which
had slightly different language from the current reissue statute,
35 U.S.C. § 251. . . .
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

21

Despite the change in language relating to the “same invention”
requirement, it appears that no change in substance was intended.
There is nothing in the statutory language or legislative history
suggesting that Congress intended to overturn the long line of
Supreme Court cases culminating in Industrial Chemicals by this
change in language.
Antares Pharma, 771 F.3d at 1360.
[O]ur cases explain[] that the Industrial Chemicals standard is
analogous to the written description requirement, which, as our
en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly &
Co., 598 F.3d 1336 (Fed. Cir. 2010) made clear, requires that the
patent description “clearly allow persons of ordinary skill in the
art to recognize that the inventor invented what is claimed.” Id.
at 1351. Whether or not the written description requirement of
§ 112 was satisfied here, Industrial Chemicals made clear that,
for § 251, “it is not enough that an invention might have been
claimed in the original patent because it was suggested or
indicated in the specification.” 315 U.S. at 676, 62 S.Ct. 839.
Rather, the specification must clearly and unequivocally disclose
the newly claimed invention as a separate invention. Id.
Antares Pharma, 771 F.3d at 1362 (citations omitted, emphasis added).
In Forum US, the Federal Circuit reiterated its analysis in Antares,
stating:
It is well settled that for broadening reissue claims, “it is
not enough that an invention might have been claimed in the
original patent because it was suggested or indicated in the
specification.” Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839
(interpreting 35 U.S.C. § 64 (1934)). The Supreme Court
described this standard in nearly identical language almost fifty
years before Industrial Chemicals. See Corbin Cabinet Lock Co.
v. Eagle Lock Co., 150 U.S. 38, 42–43, 14 S.Ct. 28, 37 L.Ed. 989
(1893) (“[T]o warrant new and broader claims in a reissue, such
claims must not be merely suggested or indicated in the original
specification, drawings, or models, but it must further appear
from the original patent that they constitute parts or portions of
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

22

the invention, which were intended or sought to be covered or
secured by such original patent.”). Congress codified this long-
standing requirement, which became known as the “same
invention” requirement. Antares, 771 F.3d at 1359–60 (quoting
35 U.S.C. § 64 (1946)); see, e.g., Section 53, Patent Act of 1870,
16 Stat. 198 (1870) (“[T]he commissioner shall . . . cause a new
patent for the same invention . . . to be issued to the patentee.”).
With the passage of the 1952 Patent Act, Congress revised
the statutory language from “the same invention” to “the original
patent.” Antares, 771 F.3d at 1360; 35 U.S.C. § 251 (1952).
Despite this revision, case law has not suggested that the 1952
Patent Act’s revised statutory language substantively changed
“the ‘same invention’ requirement or that the standard of
Industrial Chemicals has in any way been altered by the
legislative changes.” Antares, 771 F.3d at 1360–61.
Thus, for broadening reissue claims, the specification of
the original patent must do more than merely suggest or indicate
the invention recited in reissue claims; “[i]t must appear from
the face of the instrument that what is covered by the reissue was
intended to have been covered and secured by the original.”
Indus. Chems., 315 U.S. at 676, 62 S.Ct. 839 (emphasis added).
Stated differently, the original patent “must clearly and
unequivocally disclose the newly claimed invention as a
separate invention.” Antares, 771 F.3d at 1362.
Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1351–52 (Fed. Cir.
2019) (emphasis added).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

23

C.4. Prosecution and Appeal History
The following findings of fact (FF) are supported by a preponderance
of the evidence.
C.4.a. U.S. Patent 7,627,533 - Prosecution History
FF 1. On October 8, 2003, Appellant filed U.S. Patent Application
No. 10/681,393 containing twenty claims. Claims 1 and 15 as originally
filed read (emphasis, formatting, and bracketed material added):
Claim 1. A method for concealing the true identity of a
user in a communications system comprising a first user
equipment having a first characteristic identifier, a second user
equipment having a second characteristic identifier, a service
network serving the first and the second user equipment, the
method comprising:
[A.] requesting a virtual identifier by means of the
first user equipment;
[B.] establishing the virtual identifier for the first user
equipment;
[C.] linking the virtual identifier of the first user
equipment to the first characteristic identifier of the first
user equipment; and
[D.] using the virtual identifier of the first user
equipment for communication between the first and the
second user equipment.
Claim 15. An arrangement for concealing the true
identity of a user in a communications system comprising:
[A.] a first user equipment having a first characteristic
identifier,
[B.] a second user equipment having a second
characteristic identifier,
[C.] a service network connecting the first and the
second user equipment,
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

24

[D.] wherein the arrangement is configured to:
[i.] request a virtual identifier by means of the
first user equipment;
[ii.] establish the virtual identifier for the first
user equipment;
[iii.] link the virtual identifier of the first user
equipment to the first characteristic identifier of
the first user equipment; and
[iv.] use the virtual identifier of the first user
equipment for communication between the first
and the second user equipment.
FF 2. On February 21, 2006, the Examiner mailed a Non-final Office
Action rejecting claims 1–20 as being unpatentable under 35 U.S.C. § 103(a)
over the combination of Hutchinson et al. (US 2006/0004659 A1) and
Shiloh et al. (US 2001/0037316 A1).
FF 3.A. On May 22, 2006, Appellant amended claim 1 by
cancelling claims 4 and 7 and inserting their subject matter into claim 1.
Amended claim 1 read (formatting and bracketed material added) (additions
are underlined; deletions are strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system comprising a first user
equipment having a first characteristic identifier, a second user
equipment having a second characteristic identifier, a service
network serving the first and the second user equipment, the
method comprising:
[A.] requesting a virtual identifier by means of the
first user equipment;
[B.] establishing the virtual identifier for the first user
equipment in at least one of the following:
[i.] the first user equipment and
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

25

[ii.] the service network;
[C.] linking the virtual identifier of the first user
equipment to the first characteristic identifier of the first
user equipment; and
[D.] using the virtual identifier of the first user
equipment for communication between the first and the
second user equipment.
FF 3.B. Also in the May 22, 2006 amendment, Appellant
amended claim 15 similar to claim 1, cancelled claim 17, and added claims
21–36. Amended claim 21 read (formatting and bracketed material added):
Claim 21. A user equipment, comprising a first
characteristic identifier, the user equipment communicating via
a service network with a second user equipment having a
second characteristic identifier, wherein the user equipment is
configured to:
[A.] establish a virtual identifier for the user
equipment in at least one of the following:
[i.] the first user equipment and
[ii.] the service network; and
[B.] link the virtual identifier of the user equipment to
the first characteristic identifier of the user equipment;
and
[C.] use the virtual identifier of the user equipment for
communication between the user equipment and the
second user equipment.
FF 4. On August 15, 2006, the Examiner mailed a Final Office
Action rejecting claims 1–3, 5, 6, 8–16, and 18–36 (all pending claims) as
being unpatentable under 35 U.S.C. § 103(a) over various combinations of
Otto et al. (US 2001/0029496 A1), Zhou (US 2005/0132065 A1), Gilbert
(US 6,968,385), and Lumme et al. (WO 00/12364).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

26

FF 5. On January 16, 2007, in a Request for Continued Examination
(RCE), Appellant cancelled claims 24–29 and amended the remaining
claims. Amended claims 1 and 21 read (formatting and bracketed material
added) (additions are underlined; deletions are strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system comprising a first user
equipment having a first characteristic identifier, a second user
equipment having a second characteristic identifier, a service
network serving the first and the second user equipment, the
method comprising:
[A.] requesting a virtual identifier by means of the
first user equipment;
[A.] establishing the a virtual identifier for the a first
user equipment in at least one of the following:
[i.] the first user equipment and
[ii.] the service network;
[B.] linking the virtual identifier of the first user
equipment to the a first characteristic identifier of the
first user equipment; and
[C.] using the virtual identifier of the first user
equipment for communication between the first and the a
second user equipment.
Claim 21. A user equipment, comprising a first
characteristic identifier, the user equipment communicating via
a service network with a second user equipment having a
second characteristic identifier, wherein the user equipment is
configured to:
[A.] establish a virtual identifier for the user
equipment in at least one of the following:
[i.] the first user equipment and
[ii.] the service network;
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

27

[B.] link the virtual identifier of the user equipment to
the a first characteristic identifier of the user equipment;
and
[C.] use the virtual identifier of the user equipment for
communication between the user equipment and the a
second user equipment.
FF 6. On April 4, 2007, the Examiner mailed a Non-final Office
Action rejecting claims 1–3, 5, 6, 8–16, 18–23, and 30–36 (all pending
claims) as being unpatentable under 35 U.S.C. § 103(a) over various
combinations of Otto, Gilbert, Lumme, and newly cited Stolfo (US
7,069,249).
FF 7. On August 8, 2007, Appellant added new claims 37–52,
cancelled claim 32, and amended claims 1, 15–21, 30, 31, 35, and 36.
Amended claims 1 and 21 read (formatting and bracketed material added)
(additions are underlined; deletions are strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system, the method comprising:
[A.] establishing a virtual identifier for a first user
equipment in at least one of the following:
[i.] the first user equipment and
[ii.] the service network;
[B.] linking the virtual identifier of the first user
equipment to a first characteristic identifier of the first
user equipment;
[C.] predetermining one or more limitations for the
use of the virtual identifier; and
[D.] using the virtual identifier of the first user
equipment for communication between the first and a
second user equipment taking the predetermined one or
more limitations into account.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

28

Claim 21. A user equipment, wherein the user equipment
is configured to:
[A.] establish a virtual identifier in at least one of the
following:
[i.] the first user equipment and
[ii.] the service network;
[B.] link the virtual identifier of the user equipment to
a first characteristic identifier of the user equipment; and
[C.] predetermine one or more limitations for the use
of the virtual identifier; and
[D.] use the virtual identifier of the user equipment for
communication between the user equipment and a second
user equipment taking the predetermined one or more
limitations into account.
FF 8. On November 16, 2007, the Examiner mailed a Final Office
Action rejecting claims 1–3, 5, 6, 8–16, 18–23, 30, 31, and 33–52 (all
pending claims) as being unpatentable under 35 U.S.C. § 103(a) over
various combinations of Otto, Gilbert, Lumme, Stolfo, and newly cited
Junda (US 2003/0069857 A1).
FF 9.A. On March 17, 2008, in a second RCE, Appellant
presented amendments and remarks directed thereto. Appellant amended
claims 1, 5, 15, 21–23, 30, 31, 34, 36, and 41–44. Amended claims 1 and 21
read (formatting and bracketed material added) (additions are underlined;
deletions are strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system, the method comprising:
[A.] requesting a virtual identifier;
[B.] establishing a virtual identifier for a first user
equipment in at least one of:
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

29

[i.] the first user equipment and
[ii.] the service network;
[C.] linking the virtual identifier of the first user
equipment to a characteristic identifier of the first user
equipment;
[D.] predetermining one or more limitations for the
use of the virtual identifier; and
[E.] using the virtual identifier of the first user
equipment for communication between the first and a
second user equipment taking on the basis of the
predetermined one or more limitations into account.
Claim 21. An apparatus A user equipment, wherein the
user equipment is configured to:
[A.] request a virtual identifier;
[B.] establish a virtual identifier;
[C.] link the virtual identifier of the apparatus user
equipment to a characteristic identifier of the apparatus
user equipment;
[D.] predetermine one or more limitations for the use
of the virtual identifier; and
[E.] use the virtual identifier of the apparatus user
equipment for communication between the apparatus
user equipment and a second apparatus user equipment
taking on the basis of the predetermined one or more
limitations into account.
FF 9.B. In the March 17, 2008 remarks, Appellant stated:
Applicant has amended the independent claims to indicate
[(a)] that a user equipment requests a virtual identifier or
[(b)] that the virtual identifier consists of numbers such that a
portion of the numbers indicate that the virtual identifier is a
virtual identifier. . . . The pending claims are believed to be
patentable over the asserted references for the reasons set forth
below.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

30

The asserted combination of references (Otto, Stolfo, and
Junda) does not teach a device [(a)] requesting a virtual identifier
as now claimed in independent Claims 1, 15 and 21. . . . None of
the asserted references teaches requesting and using a virtual
identifier as now claimed.
In addition, the asserted combination of references fails to
teach [(b)] a virtual identifier consisting at least partly of
numbers where at least a portion of the numbers identify the
virtual identifier as a virtual identifier, as now claimed in Claims
30, 31, 34 and 36. . . . As the asserted references do not teach the
above-discussed limitations, any combination thereof must also
fail to teach such limitations. Without correspondence to each of
the claimed limitations, each of the § 103(a) rejections would be
improper. Applicant accordingly requests that the rejections be
withdrawn.
With respect to the rejections of various dependent claims,
. . . [n]either Lumme nor Gilbert appears to teach [(a)] a user
equipment requesting a virtual identifier or [(b)] that the virtual
identifier consists of numbers such that a portion of the numbers
indicate that the virtual identifier is a virtual identifier. As
neither Lumme nor Gilbert teaches or suggests these claim
limitations, any combination of these teachings with those of
Otto, Stolfo, and Junda must also fail to teach such limitations.
Thus, the § 103(a) rejection of dependent Claims 9, 23, 27, 33
and 35 should also not be maintained. Applicant accordingly
requests that the rejections be withdrawn.
March 17, 2008 Amendment 11–13 (emphasis and bracketed material
added).
FF 10. On December 31, 2008, the Examiner mailed a Final
Office Action rejecting claims 1–3, 5, 6, 8–16, 18–23, 30, 31, and 33–52 (all
pending claims) as being unpatentable under 35 U.S.C. § 103(a) over
various combinations of Otto, Gilbert, Lumme, Stolfo, and Junda.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

31

FF 11.A. On April 20, 2009, in a third RCE, Appellant presented
amendments and remarks directed thereto. Appellant cancelled claim 35 and
amended claims 1, 15, 21, 30, 31, 34, and 36–44. Amended claims 1 and 21
read (formatting and bracketed material added) (additions are underlined;
deletions are strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system, the method comprising:
[A.] requesting a virtual identifier;
[B.] establishing a virtual identifier for a first user
equipment in at least one of:
[i.] the first user equipment and
[ii.] the service network;
[C.] linking the virtual identifier of the first user
equipment to a characteristic identifier of the first user
equipment;
[D.] requesting from a service network, by a second
user equipment, a communications connection to be
established to the first user equipment by using the
virtual identifier of the first user equipment;
[D.] predetermining one or more limitations for the
use of the virtual identifier
[E.] matching the virtual identifier used in the request
from the second user equipment to a database of virtual
identifiers linked to characteristic identifiers in the
service network; and
[F.] establishing, by the service network, the
requested using the virtual identifier of the first user
equipment for communication connection between the
first and a from the second user equipment to the first
user equipment when the characteristic identifier
matching the virtual identifier of the first user equipment
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

32

has been found on the basis of the matching on the basis
of the predetermined one or more limitations.
Claim 21. An apparatus configured to:
[A.] request a virtual identifier;
[B.] establish a virtual identifier;
[C.] link the virtual identifier of the apparatus to a
characteristic identifier of the apparatus for enabling a
second apparatus to request from the service network a
communications connection to be established to the
apparatus by using the virtual identifier of the apparatus,
and for enabling the service network to establish the
requested communication connection from the second
apparatus to the apparatus on the basis of determining the
characteristic identifier matching the virtual identifier of
the apparatus.;
[D.] predetermine one or more limitations for the use
of the virtual identifier; and
[E.] use the virtual identifier of the apparatus for
communication between the apparatus and a second
apparatus on the basis of the predetermined one or more
limitations.
FF 11.B. In the April 20, 2009 remarks,7 Appellant stated:
Applicant has amended each of the independent claims
to indicate that [(a)] a second user equipment requests a
communications connection with a first user equipment using a
virtual identifier of the first user equipment and [(b)] such
connection is established when a characteristic identifier is found

7 Although Appellant’s remarks state that “Applicant has amended each of
the independent claims to indicate . . . a characteristic identifier is found to
match the virtual identifier,” independent claims 31 and 36 do not include
this limitation. However, claims 31 and 36 were cancelled by the
immediately subsequent Examiner’s Amendment on July, 24, 2009.
See FF 12.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

33

to match the virtual identifier. . . . The pending claims are
believed to be patentable over the asserted references for the
reasons set forth below.
The asserted combination of references does not teach
[(a)] a second user equipment using a first user equipment’s
virtual identifier to request a communications connection to the
first user equipment. More specifically, none of the asserted
references teaches such a use of a virtual identifier by a device
not identified by the virtual identifier. . . . Without
correspondence to each of the claimed limitations, each of the
§ 103(a) rejections is improper. Applicant accordingly requests
that the rejections be withdrawn.
April 20, 2009 Amendment 12–13 (emphasis and bracketed material added).
FF 12. On July, 24, 2009, the Examiner mailed a Notice of
Allowance including an Examiner’s Amendment. The Examiner’s
Amendment cancelled independent claims 31 and 36 and further amended
claims 1, 21, 30, 33, 34, and 49–52. “Authorization for this examiner’s
amendment was given in a telephone interview with Erin M. Nichols on July
22, 2009.” July 24, 2009, Notice of Allowance 2.
Claims 1 and 21 read (additions are underlined; deletions are
strikethroughs):
Claim 1. A method for concealing the true identity of a
user in a communications system, the method comprising:
[A.] requesting a virtual identifier from a first user
equipment;
[B.] establishing a virtual identifier for a the first user
equipment in at least one of:
[i.] the first user equipment and
[ii.] the service network;
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

34

[C.] linking the virtual identifier of the first user
equipment to a characteristic identifier of the first user
equipment;
[D.] requesting from a service network, by a second
user equipment, a communications connection to be
established to the first user equipment by using the
virtual identifier of the first user equipment;
[E.] matching the virtual identifier used in the request
from the second user equipment to a database of virtual
identifiers linked to characteristic identifiers in the
service network; and
[F.] establishing, by the service network, the
requested communication connection from the second
user equipment to the first user equipment when the
characteristic identifier matching the virtual identifier of
the first user equipment has been found on the basis of
the matching.
Claim 21. An apparatus configured to:
[A.] request a virtual identifier;
[B.] establish a virtual identifier;
[C.] link the virtual identifier of the apparatus to a
characteristic identifier of the apparatus for enabling in
order to configure a second apparatus to request from the
service network a communications connection to be
established to the apparatus by using the virtual identifier
of the apparatus, and for enabling in order to configure
the service network to establish the requested
communication connection from the second apparatus to
the apparatus on the basis of determining that the
characteristic identifier matches matching the virtual
identifier of the apparatus.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

35

FF 13. On December 1, 2009, the application issued as U.S.
Patent 7,627,533 B2 with patent claims 1–39 corresponding to application
claims 1–3, 5, 6, 8–16, 18–23, 30, 33, 34, and 37–52 (i.e., the Office
renumbered the application claims so as to group related claims in the issued
patent). Patent claims 1 and 22 correspond to application claims 1 and 21
respectively.
B.4.b. Reissue Application 14/630,337 - Prosecution History
FF 14. On February 24, 2015, Appellant filed reissue application
14/630,337, as a continuation application of U.S. Patent Application No.
13/309,506 filed on December 1, 2011, seeking to reissue U.S. Patent
7,627,533 B2, issued December 1, 2009, based on Application No.
10/681,393, filed October 8, 2003.
FF 15. On September 28, 2015, Appellant filed an Amendment
amending original patent claims 1–39 along with adding new reissue claims
40–54 for consideration.
FF 16. On September 30, 2015, Appellant filed a Reissue Declaration
identifying the error upon which the reissue was based as (emphasis added):
Claim 1 of the original patent includes a limitation for
“requesting . . . by a second user equipment[] a communications
connection[.]” Applicant did not claim “receiving a request for
communication” as recited in new claim 40. Accordingly, this
at least one error represents claiming less than what Applicant
was entitled to claim.
FF 17. On December 19, 2016, in response to a non-final rejection,
Appellant cancelled patent claims 1–39 and replaced reissue claims 40–54
with new (i.e., different) reissue claims 40–92.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

36

FF 18. On June 9, 2017, in response to a final rejection, Appellant
filed an RCE and amended reissue claims 40–54 and added new reissue
claim 93.
FF 19. On January 12, 2018, the Examiner mailed a Non-final
Office Action that included a rejection of claims 40–93 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.8
The Office Action also rejected claims 40–93 on other grounds.
FF 20. On May 15, 2018 and August 22, 2018, in response to the
non-final rejection, Appellant cancelled reissue claims 41, 42, 48, 49, 57, 58,
and 60, and presented the remaining reissue claims as newly renumbered
reissue claims 40–86.
FF 21. On April 8, 2019, in response to a final rejection, Appellant
filed an RCE, cancelled newly renumbered reissue claim 45, and presented
the remaining reissue claims by again newly renumbering the reissue claims
as claims 40–85.
FF 22.A. On December 2, 2019, the Examiner mailed a Final
Office Action which again rejects claims 40–85 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.

8 The Examiner’s subsequent Final Office Action mailed on December 2,
2019, repeats this recapture rejection. In our findings, we discuss the details
of the Examiner’s recapture rejection below as to that Final Office Action
because it is the rejection on appeal before us.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

37

Also, the Final Office Action rejects claims 40–85 under 35 U.S.C.
§ 251 as being based upon a defective reissue declaration. Further, the Final
Office Action rejects claims 40–85 under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement, and under 35
U.S.C. § 102(e) and § 103(a). Lastly, the Final Office Action rejects claims
41, 42, 52–69, 71, 76, 81, 83, and 84, under 35 U.S.C. § 112, second
paragraph as indefinite.9
FF 22.B. The Examiner’s rejection of claims 40–85 under 35
U.S.C. § 251 as being an improper recapture follows the three step process
of the recapture rule.
Applying the first step of the recapture rule, the Examiner determines
whether and in what “aspect” the reissue claims are broader than the patent
claims. Particularly, the Examiner determined:

Date [of
amendment]
Surrendered Claim Limitation(s)
3/17/2008 A) Request a virtual identifier for an
anonymous first apparatus
4/20/2009 B) Enabling a second apparatus to request
from the service network a communications
connection to be established to the
anonymous first apparatus
4/20/2009 C) Using the virtual identifier of the
anonymous first apparatus as part of the
request for communication connection to the
anonymous first apparatus

9 All affirmed for reasons set forth supra.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

38

4/20/2009 D) Establishing the requested connection
from the second apparatus to the anonymous
first apparatus on the basis of determining the
characteristic identifier matching the virtual
identifier of the first apparatus

Pending reissue claims 40-[85] are each broadened in a manner
related to the above surrendered subject matter.
December 2, 2019, Final Office Action 11.
FF 22.C. Applying the second step of the recapture rule, the
Examiner determined whether the broader aspects of the reissue claims
relate to surrendered subject matter. Particularly, the Examiner determined:
During the prosecution of 10/681,393 and subsequent to an art
rejection, applicant amended/argued the following claim
limitations in seeking allowance of the application:
Date [of
amendment]
Surrendered Claim Limitation(s)
3/17/2008 A) Request a virtual identifier for an
anonymous first apparatus
4/20/2009 B) Enabling a second apparatus to request
from the service network a communications
connection to be established to the
anonymous first apparatus
4/20/2009 C) Using the virtual identifier of the
anonymous first apparatus as part of the
request for communication connection to the
anonymous first apparatus
4/20/2009 D) Establishing the requested connection
from the second apparatus to the anonymous
first apparatus on the basis of determining the
characteristic identifier matching the virtual
identifier of the first apparatus
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

39

December 2, 2019, Final Office Action 10–11.
FF 22.D. Applying the third step of the recapture rule, the
Examiner determined whether the surrendered subject matter has crept into
the reissue claim. Particularly, the Examiner determined:

Independent
reissue claim
Surrendered Claim
Limitation(s) not present
40 B,C,D
50 B,C,D
52 B,C,D
58 A,B,C,D
63 A,B,C,D
70 A,B,C,D
75 A,B,C,D
80 A,B,C,D
88 A,B,C,D

Each independent claim eliminates the surrendered subject
matter in its entirety; no longer are any of these steps present
(pursuant to communication towards the anonymous party).
Therefore there is no “material narrowing” present.
December 2, 2019, Final Office Action 11–12.
FF 22.E. In conclusion, the Examiner determined:
As per MPEP 1412.02(C), “[i]f surrendered subject matter has
been entirely eliminated from a claim in the reissue application,
then a recapture rejection under 35 U.S.C. 251 is proper and must
be made for that claim.”
December 2, 2019, Final Office Action 12.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

40

C.4.c. Reissue Application 14/831,619 - Appeal History
FF 23. On January 31, 2020, Appellant filed a Notice of Appeal
from the Examiner to the Patent Trial and Appeal Board (PTAB).
FF 24.A. On March 27, 2020 and May 6, 2020, Appellant filed
respectively an Appeal Brief and Supplemental Appeal Brief making
arguments with respect to the recapture rejection.
FF 24.B. First, as to the recapture rejection of claim 58, Appellant
argues:
[T]he Examiner alleges that the limitation “request[ing] a
virtual identifier for an anonymous first apparatus is absent from
claim[] 58 . . . .” (Office Action, at p. 11-12). Appellant
respectfully disagrees. Claim[] 58 . . . expressly require one or
more virtual identifiers to be established for a first user
equipment. Although the establishment of one or more virtual
identifiers for a first user equipment is not identical to a request
for a virtual identifier, the limitation is nevertheless materially
narrower than the original claims presented in the ’533 patent.
Under the third step of the M.P.E.P.’s recapture test,
claim[] 58 . . . cannot constitute an impermissible recapture at
least because claim[] 58 . . . materially narrow[s] the application
claims to avoid recapture of the surrendered subject matter.
March 27, 2020, Appeal Brief 15 (emphasis added).
FF 24.C. Second, as to the recapture rejection of claim 40,
Appellant argues:
The Examiner also alleges that the limitation “enabling a
second apparatus to request from the service network a
communications connection to be established to the anonymous
first apparatus” is absent from claim[] 40 . . . . (Office Action, at
p. 11-12). Appellant respectfully disagrees. Instead of
establishing a communication connection from a second user
equipment to a first user equipment, claim 40 . . . expressly
require[s] the establishment of a communication connection
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

41

from the first user equipment to the second user equipment. Even
assuming arguendo that a communication connection from a first
user equipment to a second user equipment is a broader limitation
than a communication connection from the second user
equipment to the first user equipment, which the Applicant
disputes, this limitation nevertheless materially narrows the
original claim presented in U.S. Patent No. ’533, which is silent
on establishment of a communication connection. Accordingly,
claim[] 40 . . . cannot constitute an improper recapture under a
proper application of the recapture rule.
March 27, 2020, Appeal Brief 16.
FF 24.D. Third, also as to the recapture rejection of claim 40,
Appellant argues:
The Examiner further alleges that claim[] 40 . . .
exclude[s] the limitation “using the virtual identifier of the
anonymous first apparatus as part of the request for
communication connection to the anonymous first apparatus” as
well as the limitation “establishing the requested connection
from the second apparatus to the anonymous first apparatus on
the basis of determining the characteristic identifier matching the
virtual identifier of the first apparatus.” (Office Action, at p. 11-
12). This assertion is patentably false at least because these
limitations are present in 40 . . . For example, claim[] 40 . . .
recite[s] a communication connection between a first user
equipment and a second user equipment that is established based
on a virtual identifier of the first user equipment being matched
to an identifier of the first user equipment. Again, even assuming
arguendo that a communication connection from the first user
equipment to the second user equipment is a broader limitation
than a communication connection from the second user
equipment to the first user equipment, which the Applicant
disputes, these limitations still materially narrows the original
claim presented in the ’533 Patent. Accordingly, claim[] 40 . . .
cannot constitute an improper recapture under a proper
application of the recapture rule.
March 27, 2020, Appeal Brief 16–17.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

42

FF 25. On June 15, 2020, the Examiner mailed an Examiner’s
Answer which withdrew a second rejection of claim 52 under 35 U.S.C.
§ 112, first paragraph, as failing to meet the written description requirement.
The Examiner’s Answer maintained the remaining rejections under 35
U.S.C. §§ 102, 103, 112, first paragraph, 112, second paragraph, and 251
(defective declaration and recapture).
FF 26. On August 14, 2020, Appellant filed a Reply Brief
further addressing the three rejections under 35 U.S.C. §§ 102, 112, first
paragraph, and 251 (recapture). As to the recapture rejection, essentially,
Appellant repeated the recapture arguments of the Appeal Brief. Reply
Br. 5–7.
C.5. Panel’s Recapture Determination
C.5.a. Examiner’s Recapture Analysis
As shown at FF 22.B.–22.D. supra, in the Final Office Action, the
Examiner determines (a) whether and in what “aspect” the reissue claims are
broader than the patent claims, (b) whether the broader aspects of the reissue
claims relate to surrendered subject matter, and (c) whether the surrendered
subject matter has crept into the reissue claim (i.e., whether Appellant is
recapturing the full scope of what was surrendered).
Based on this analysis using the three-step recapture rule, the
Examiner concludes that Appellant has attempted an “impermissible
recapture of broadened claimed subject matter surrendered” during
prosecution. FF 22.A. We agree.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

43

C.5.b. Disagreement with Appellant’s First Recapture Argument
As shown at FF 24.B. supra, in the Appeal Brief, Appellant contends:
Claim[] 58 . . . expressly require one or more virtual identifiers
to be established for a first user equipment. Although the
establishment of one or more virtual identifiers for a first user
equipment is not identical to a request for a virtual identifier, the
limitation is nevertheless materially narrower than the original
claims presented in the ’533 patent.
March 27, 2020, Appeal Brief 15 (emphasis added). Therefore, for this
reason Appellant argues that accordingly, claim 58 “cannot constitute an
improper recapture.” Id. We disagree.
The Examiner correctly points out that the feature of “one or more
virtual identifiers being established for the first user equipment” (claim 58)
“was present in the originally prosecuted claims at the time when [a request
for a virtual identifier] was introduced in order to overcome an art rejection.”
Ans. 62.
Our review of the original claims (e.g., claim 1 shown in FF 7 supra)
determines that the limitation “establishing a virtual identifier for a first user
equipment,” now argued as materially narrowing, was already present in the
original claims (claim 1 on August 8, 2007) prior to the March 17, 2008
amendment adding the surrender generating limitation “requesting a virtual
identifier” to claim 1 (see FF 9.A.). Thus, recapture is not avoided because
reissue claim 58 does not “materially narrow” the claims relative to the
original claims.
Although not raised by Appellant, we note that Examiner’s rejection
and Appellant’s appeal only discuss one of the two alternative surrender
generating limitations added on March 17, 2008. The independent original
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

44

claims were amended to include either one or the other surrender generating
limitation. See FF 9.B. As with the “requesting a virtual identifier”
surrender generating limitation, the alternative “the virtual identifier consists
of numbers such that a portion of the numbers indicate that the virtual
identifier is a virtual identifier” surrender generating limitation is also
missing from reissue claim 58 (and all other reissue claims).
C.5.c. Disagreement with Appellant’s Second Recapture Argument
As shown at FF 24.C. supra, in the Appeal Brief, Appellant contends:
The Examiner [] alleges that the limitation “enabling a
second apparatus to request from the service network a
communications connection to be established to the anonymous
first apparatus” is absent from claim[] 40 . . . . Instead of
establishing a communication connection from a second user
equipment to a first user equipment, claim 40 . . . expressly
require[s] the establishment of a communication connection
from the first user equipment to the second user equipment. Even
assuming arguendo that a communication connection from a first
user equipment to a second user equipment is a broader limitation
than a communication connection from the second user
equipment to the first user equipment, which the Applicant
disputes, this limitation nevertheless materially narrows the
original claim presented in U.S. Patent No. ’533, which is silent
on establishment of a communication connection.
March 27, 2020, Appeal Brief 16 (emphasis added). Therefore, Appellant
argues that claim 40 “cannot constitute an improper recapture.” We
disagree.
At issue is the surrender generating limitation of “requesting from a
service network, by a second user equipment, a communications connection
to be established to the first user equipment by using the virtual identifier of
the first user equipment” (emphasis added) added to claim 1 on April 8,
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

45

2009. See FF 11.A. We find no merit to Appellant’s position that swapping
the direction of the communications connection is a material narrowing.
Our review of the original claims determines that the limitation
receiving, from the first user equipment, a second request to
establish a communication connection from the first user
equipment to a second user equipment, and wherein the
communication connection is to be established based at least on
the virtual identifier
(reissue claim 40 on appeal) now argued as materially narrowing, was
already covered in the original claims
The method of claim 1, the method further comprising receiving
at a service network of the communications system a request for
establishing a communications connection between the first and
the second user equipment, the request comprising the virtual
identifier of the first user equipment.
(original claim 8 on March 17, 2008 covers a communications connection in
either direction)10 prior to the April 20, 2009 amendment adding the
surrender generating limitation
requesting from a service network, by a second user equipment,
a communications connection to be established to the first user
equipment by using the virtual identifier of the first user
equipment
to claim 1 to limit the communications connection to be from the second
user equipment to the first user equipment (see FF 11.A.).
Thus, recapture is not avoided because reissue claim 40 does not
“materially narrow” the claims relative to the original claims.

10 Claim 8 was rejected based on prior art on December 31, 2008 (FF 10).
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

46

C.5.d. Agreement with Appellant’s Third Recapture Argument
As shown at FF 24.D. supra, in the Appeal Brief, Appellant contends:
The Examiner [] alleges that claim[] 40 . . . exclude[s] . . .
the limitation[:]
“establishing the requested connection from the
second apparatus to the anonymous first apparatus
on the basis of determining the characteristic
identifier matching the virtual identifier of the first
apparatus.”
(Office Action, at p. 11-12). This assertion is patentably false at
least because th[is] limitation[] [is] present in 40 . . . For
example, claim[] 40 . . . recite[s]
a communication connection between a first user
equipment and a second user equipment that is
established based on a virtual identifier of the first
user equipment being matched to an identifier of the
first user equipment.
Again, even assuming arguendo that a communication
connection from the first user equipment to the second user
equipment is a broader limitation than a communication
connection from the second user equipment to the first user
equipment, which the Applicant disputes, these limitations still
materially narrows the original claim presented in the ’533
Patent.
March 27, 2020, Appeal Brief 16–17 (emphasis and formatting added).
Therefore, Appellant reasons the recapture rule does not apply to this claim.
We agree with Appellant to the extent that we conclude the recapture rule
does not apply to this matching limitation.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

47

The April 20, 2009 amendment added a matching limitation to claim 1
which read (emphasis added):
matching the virtual identifier used in the request from the
second user equipment to a database of virtual identifiers linked
to characteristic identifiers in the service network; and
establishing, by the service network, the requested
communications connection from the second user equipment to
the first user equipment when the characteristic identifier
matching the virtual identifier of the first user equipment has
been found on the basis of the matching.
See FF 11.A. supra. This or a similar limitation was added to independent
claims 15, 21, 30, and 34. However, the amendments on April 8, 2009, did
not add such a limitation to independent claims 31 and 36. Therefore, we
determine that an objective observer viewing the prosecution history would
understand that this matching limitation was not essential in order to
overcome the rejection and obtain the patent. That is, no surrender occurred
as to this matching limitation. Thus, as to the matching limitation, any
broader aspects of matching in the reissue claims cannot relate to
surrendered subject matter (Second step of the recapture analysis).
C.5.e. Overlooked Aspect “Of The Invention”
Although not argued by Appellant, we review whether claims 40–85
include an overlooked aspect of the invention. That is, we determine
whether the reissue claims are directed to an entirely new embodiment that
is not subject to the recapture rule.
As a fundamental requirement, any reissue claim must comply with
the original patent (“same invention”) requirement of § 251. See Section
C.3. supra. That is, the patent specification must disclose, clearly and
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

48

unequivocally, the newly claimed invention as a separate invention. Reissue
claims to “overlooked aspects” (See Section C.2.d. supra) are not exempt
from the original patent (“same invention”) requirement under § 251. See
Gen. Elec., 789 F. App’x at 861 (determining that the “subcombination is
not an overlooked aspect of the invention.”) (emphasis added). A reissue
claim that does not meet the original patent (“same invention”) requirement
under § 251 cannot be an overlooked aspect of the invention because it is not
directed to the disclosed invention of the patent. Therefore, as a first step to
determining whether a reissue claim is directed to an “overlooked aspect,”
we must determine whether the reissue claims meets the original patent
(“same invention”) requirement under § 251.
Where the 35 U.S.C. § 112, first paragraph, written description
requirement is based on what the skilled artisan would have understood was
within the possession of the inventor, recent Federal Circuit case law
indicates that the original patent requirement under § 251 requires something
more:
Whether or not the written description requirement of § 112 was
satisfied here, Industrial Chemicals made clear that, for § 251,
“it is not enough that an invention might have been claimed in
the original patent because it was suggested or indicated in the
specification.” 315 U.S. at 676, 62 S.Ct. 839. Rather, the
specification must clearly and unequivocally disclose the newly
claimed invention as a separate invention. Id.
Antares Pharma, 771 F.3d at 1362 (citations omitted, emphasis added).
Thus, for broadening reissue claims, the specification of
the original patent must do more than merely suggest or indicate
the invention recited in reissue claims; “[i]t must appear from the
face of the instrument that what is covered by the reissue was
intended to have been covered and secured by the original.”
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

49

Indus. Chems., 315 U.S. at 676 . . . (emphasis added). Stated
differently, the original patent “must clearly and unequivocally
disclose the newly claimed invention as a separate invention.”
Antares, 771 F.3d at 1362. We apply the standard set forth in
Industrial Chemicals and Antares to this case and hold that the
reissue claims are invalid.
Forum US, 926 F.3d at 1351–52 (emphasis added). To the extent that the
Specification must clearly and unequivocally, as required by 35 U.S.C.
§ 251, disclose the appealed reissue claims 40–85 as a separate invention,
we conclude it does not for the reasons that follow.
As we determined in Sections A.3.a. and A.3.b. supra, claims 40–85
fail to comply with the written description requirement under 35 U.S.C.
§ 112, first paragraph. That is, Appellant’s Specification does not show
possession (either explicitly or by suggestion or indication) of the claimed
invention of claims 40–85. As we note above, Federal Circuit case law
indicates that the original patent requirement under § 251 requires something
more than is required for the written description requirement under 35
U.S.C. § 112, first paragraph. Having failed to meet the written description
requirement, claims 40–85 also fail to meet the original invention
requirement under 35 U.S.C. § 251. That is, applying the Industrial
Chemicals standard, reissue claims 40–85 do not meet the “original patent”
clause of § 251, and thus cannot be an overlooked aspect of the invention so
as to avoid the recapture rule.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

50

OUTCOME
The following table summarizes the outcome of each rejection:11
Claims
Rejected
35 U.S.C.
§ Basis/References Affirmed Reversed
40–85 112, first
para.
Written
description
40–85
41, 42, 52–
69, 71, 76,
81, 83, 84
112,
second
para.
Indefiniteness 41, 42, 52–
69, 71, 76,
81, 83, 84

40–85 251 Defective
declaration
40–85
40–85 251 Reissue recapture 40–85
40–43, 45,
46, 50–54,
58, 60, 63,
65, 66, 70,
71, 73–76,
78–81, 83–
85
102(e) Levosky 40–43, 45,
46, 50–54,
58, 60, 63,
65, 66, 70,
71, 73–76,
78–81, 83–
85

44, 64 103(a) Levosky,
Jarvinen
44, 64
47, 48, 55,
56, 59, 61,
67, 68, 72,
77, 82
103(a) Levosky,
MacIntosh
47, 48, 55,
56, 59, 61,
67, 68, 72,
77, 82

49, 57, 62,
69
103(a) Levosky, Malik 49, 57, 62,
69

Overall
Outcome
40–85

11 Claim 85 is rejected on two distinct bases as failing to satisfy the written
description requirement under 35 U.S.C. §112(a). One of the two rejections
is reversed.
Appeal 2020-005992
Application 14/630,337
Patent 7,627,533 B2

51

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.
§ 1.36(a)(1)(iv).
AFFIRMED