15659037 - (D) (P.T.A.B. Nov. 3, 2020)

Sergiy Vasylyev

Patent Trials and Appeals BoardNov 3, 2020

15659037 - (D) (P.T.A.B. Nov. 3, 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. 15/659,037 07/25/2017 Sergiy Vasylyev 9707 25945 7590 11/03/2020 SERGIY VASYLYEV 3204 East Pintail Way ELK GROVE, CA 95757 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): svasilyev@yahoo.com svasylyev@svvti.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SERGIY VASYLYEV ____________________ Appeal 2020-004825 Application 15/659,0371 Patent 9,097,826 B2 Technology Center 3900 ___________________ Before ALLEN R. MacDONALD, JOHN A. JEFFERY, and MICHAEL J. ENGLE, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. JEFFERY, Administrative Patent Judge, CONCURRING. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from a Final Rejection of claims 19–37. Claims 1–18 are allowed. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Filed July 25, 2017, seeking to reissue U.S. Patent 9,097,826 B2, issued August 4, 2015, based on Application 13/647,175, filed October 8, 2012. 2 This appeal is filed pro se. As the appeal brief does not contain a statement of the real party in interest, the Office assumes that the named inventor is the real party in interest. 37 C.F.R. § 41.37(c)(1)(i). Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 2 CLAIMED SUBJECT MATTER Reissue claims 19 and 27 on appeal are illustrative of the claimed subject matter (emphasis, formatting, and bracketed material added): Claim 19. (Reissue claim) A waveguide illumination system, comprising: [A.] a planar optical waveguide having a first major surface, an opposing second major surface extending parallel to said first major surface, a first edge, and an opposing second edge; [B.] a light source optically coupled to the first edge, the light source comprising multiple light emitting diodes; [C.] a parallel array of rounded ridges formed in the first major surface and oriented perpendicular to the first edge, wherein each of the rounded ridges is configured to reflect light propagating in the planar optical waveguide using a total internal reflection such that at least some light received by the waveguide on the first edge is guided within the waveguide generally towards the second edge using optical transmission and multiple total internal reflections from each of the array of rounded ridges and the second major surface; [D.] a two-dimensional pattern of discrete surface relief features formed in the second major surface and configured for extracting light from the planar optical waveguide; and [E.] a reflective layer associated with the second surface; [F.] wherein the spacing between individual surface relief features in the two-dimensional pattern incrementally decreases along a direction from the first edge to the second edge. Claim 27. (Reissue claim) The waveguide illumination system as recited in claim 19, wherein each of the surface relief features includes multiple corrugations defining a plurality of surfaces sloped at an angle with respect to a prevalent plane of the second major surface. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 3 REJECTIONS3 A. The Examiner rejects claims 19–22 and 28–30 under 35 U.S.C. § 103 as being unpatentable over the combination of Teng, Lim, and Bierhuizen. Final Act. 5–8. Appellant does not present separate arguments for claims 20, 22, and 28–30. We select claim 19 as the representative claim for the § 103 rejection of claims 20, 22, and 28–30. Appellant separately argues claim 21. Except for our ultimate decision, we do not address the merits of § 103 rejection of claims 20, 22, and 28–30 further herein. B. The Examiner rejects claims 23–25 and 27 under 35 U.S.C. § 103 as being unpatentable over the combination of Teng, Lim, Bierhuizen, and Little. Final Act. 8. Appellant does not present separate arguments for claims 23–25. Thus, the rejection of these claims turns on our decision as to the § 103 rejection of claim 19. Appellant separately argues claim 27. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claims 23–25 further herein. C. The Examiner rejects claim 26 under 35 U.S.C. § 103 as being unpatentable over the combination of Teng, Lim, Bierhuizen, and Chang. Final Act. 9. 3 For the sake of simplicity, we refer to the rejections based on 35 U.S.C. § 103(a) as being based on 35 U.S.C. § 103. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 4 Appellant does not present separate arguments for claim 26. Thus, the rejection of this claim turns on our decision as to claim 19. Except for our ultimate decision, we do not address the merits of the § 103 rejection of claim 26 further herein. D. The Examiner rejects claims 31–37 under 35 U.S.C. § 103 as being unpatentable over Teng. Final Act. 9–11. Appellant does not present separate arguments for claims 32–34 and 37. We select claim 31 as the representative claim for the § 103 rejection of claims 32–34; and we select claim 36 as the representative claim for the § 103 rejection of claim 37. Except for our ultimate decision, we do not address the merits of § 103 rejection of claims 32–34 and 37 further herein. E. Section 251 - Recapture The Examiner also rejected claims 19–37 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. Final Act. 2–4. As to the rejection under § 251, Appellant does not argue separate patentability for claims 19–37. Appeal Br. 6–9. We select claim 19 as representative. Except for our ultimate decision, we do not discuss the merits of the § 251 rejection of claims 20–37 further herein. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 5 PRINCIPLES OF LAW - REISSUE A. 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 years from the date the original patent issues. More particularly, 35 U.S.C. § 251(a) and (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. . . . (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. B. Recapture Principles B.1. 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 patent claims, that “deliberate Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 6 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).4 See also Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998). B.2. 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 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. 4 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 2020-004825 Application 15/659,037 Patent 9,097,826 B2 7 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). B.3. 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. Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006) (citations and footnote omitted) (emphasis added). B.4. 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). Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 8 FINDINGS OF FACT - PROSECUTION HISTORY The following findings of fact (FF) are supported by a preponderance of the evidence. A. U.S. Patent 9,097,826 - Prosecution History FF 1. On October 8, 2012, Appellant filed U.S. patent application 13/647,175 containing nineteen claims. Independent claims 1, 17, and 19 as originally filed read (emphasis and bracketed material added): Claim 1. A collimating illumination system, comprising: an elongated side-emitting waveguide having a non- round transversal aperture and including a plurality of light extracting features distributed along a longitudinal axis 4of said waveguide, wherein a portion of the surface of said waveguide is shaped in the form of a light collimating element and said plurality of light extracting features is disposed in a focal area of said collimating element. Claim 17. A collimating illumination system, comprising: [A.] a planar optical array comprising a plurality of linear collimating elements and a plurality of light extraction elements arranged in strips extending parallel to said linear collimating elements; [B.] wherein each of said strips of said light extraction elements is disposed at a focal distance from at least one of said linear collimating elements and configured to redirect at least a substantial portion of light propagating in said waveguide toward said linear collimating elements and out of said waveguide. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 9 Claim 19. A collimating illumination system, comprising: [A.] a planar optical array comprising a first broad-area light guiding surface and a second broad-area light guiding surface; [B.] a plurality of surface corrugations formed in said first broad-area light guiding surface and extending parallel to each other, said corrugations forming a series of parallel ridges and valleys; and [C.] a plurality of light extraction features formed in said ridges of said corrugations; [D.] wherein each of said light extraction features is configured to receive light propagating in said waveguide and redirect said light toward said second broad-area light guiding surface. FF 2. The 13/647,175 application as filed on October 8, 2012, “claim[ed] [domestic] priority from U.S. provisional application Ser. No. 61/545,142 filed on October 8, 2011.” Spec. ¶ 1.5 FF 3. On October 29, 2012, the Office mailed to Appellant a Filing Receipt which did not grant the requested domestic priority. FF 4. On January 10, 2014, the Examiner mailed a Non-final Office Action rejecting claims 1, 3, 6, 7, 8, 10, 12–15, and 17–19 under 35 U.S.C. § 102(b) as being anticipated by Moore ’885 (US 7,817,885 B1); and rejecting claims 2, 4, 5, 9, 11, and 16, under 35 U.S.C. § 103(a) as being unpatentable over various combinations of Moore ’885, Zarian (US 6,289,150 B1), Hubble (US 5,526,190), and Moore ’970 (US 8,189,970 B2). 5 As noted further in the findings below, the 13/647,175 application as filed did not comply with the Application Data Sheet domestic priority information requirement under 37 C.F.R. § 1.76 in effect from September 16, 2012 through December 17, 2013. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 10 FF 5. On March 25, 2014, Appellant presented amendments and arguments directed thereto. Appellant amended claims 1 and 19 to read (additions are underlined; deletions are strikethroughs) (bracketed material added): Claim 1. (First Amendment). A collimating illumination system, comprising: an elongated side-emitting waveguide having a rod-like elongated body with a non-round transversal aperture cross section and including a plurality of light extracting features distributed along a longitudinal axis of said waveguide, wherein a portion of the a surface of said waveguide is shaped in the form of a light collimating element and wherein each of said plurality of light extracting features is disposed in a focal area of said collimating element. Claim 19 (First Amendment). A collimating illumination system, comprising: [A.] a planar optical array comprising a first broad-area light guiding surface and a second broad-area light guiding surface; [B.] a plurality of linear surface corrugations formed in said first broad-area light guiding surface and extending parallel to each other, said corrugations forming a series of parallel ridges and valleys; and [C.] a plurality of light extraction features formed in said ridges of said corrugations; [D.] wherein each of said light extraction features is configured to receive light propagating in said waveguide and redirect said light toward said second broad-area light guiding surface. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 11 FF 6. On May 21, 2014, the Examiner mailed a second Non-final Office Action rejecting claims 1–16 under 35 U.S.C. § 102(b) as being anticipated by newly cited Zarian (US 6,289,150); and rejecting claims 17– 19 under 35 U.S.C. § 102(b) as being anticipated by newly cited Vasylyev (US PUB 2010/0278480 A1). FF 7. On August 9, 2014, Appellant presented amendments and arguments directed thereto. Appellant cancelled claims 1–16, and argued that claims 17–19 were patentable over Vasylyev (US PUB 2010/0278480 Al). Specifically, Appellant argued: Applicant respectfully submits that the instant application claims priority from U.S. provisional application serial number 61/545,142 filed on October 8, 2011 (see par. [0001] of the Specification). The cited reference of Vasylyev is from the same inventor and is dated Nov. 4, 2010 which is less than a year prior to the instant application priority date. Accordingly, such reference does not qualify as prior art due to the one- year grace period. August 9, 2014, Amendment 4–5. FF 8. On the same day of August 9, 2014, Appellant also filed an Application Data Sheet domestic priority benefit claim as required under 37 C.F.R. § 1.76, and argued: To more distinctly claim the priority to provisional application serial number 61/545,142, Applicant has submitted Application Data Sheet which includes such information. August 9, 2014, Amendment 5. FF 9. On September 19, 2014, the Examiner mailed a Final Office Action again rejecting claims 17–19 under 35 U.S.C. § 102(b) as being anticipated by Vasylyev. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 12 FF 10. As to Appellant’s August 9, 2014 domestic priority benefit claim, the Final Office Action that mailed on September 19, 2014, stated: The benefit claim filed on August 9, 2014 was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78. If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121 or 365(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78. If applicant desires the benefit under 35 U.S.C. 119(e) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78. The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) the petition fee under 37 CFR 1.17(m); and (3) a statement that the Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 13 entire delay between the date the claim was due under 37 CFR 1.78 and the date the claim was filed was unintentional. . . . It should be noted that the [Application Data Sheet (ADS)] filed on August 9, 2014 claiming the domestic priority to 61/545,142 is more than 4 months from the actual filing and sixteen months from the filing of the provisional. September 19, 2014, Final Office Action 2–3 (emphasis added). FF 11. On October 3, 2014, Appellant filed a petition for an unintentionally delayed benefit claim under 37 C.F.R. § 1.78. FF 12. On January 10, 2015, in a Request for Continued Examination, Appellant presented amendments and arguments directed thereto. Appellant cancelled claims 17–19, and added new claims 20–38. New claims 20 and 36 read as follows (emphasis and bracketed material added): Claim 20. A collimating illumination system, comprising: [A.] a planar optical waveguide defined by a first major surface and an opposing second major surface extending parallel to said first major surface, said waveguide is configured for guiding light along a general propagation direction in response to optical transmission and a total internal reflection from at least one of said first and second major surfaces; [B.] a plurality of linear collimating elements formed in said first major surface and aligned parallel to said general propagation direction; and [C.] a plurality of light extraction elements arranged into a parallel array of linear strips, each of said strips extending parallel to said linear collimating elements and disposed near or at a focal area of at least one of said linear collimating elements; [D.] wherein each of said strips of said light extraction elements is configured to receive light propagating within said Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 14 planar optical waveguide along said general propagation direction and redirect at least a substantial portion of the received light toward said linear collimating elements and out of said waveguide. Claim 36. A collimating illumination system as recited in claim 20, [E.] wherein said waveguide comprises a lens array having a thickness T defined from the following expression: T ≈ nR / n – 1, where R is a radius of curvature of lenses forming said lens array and n is the index of refraction of a material of said lens array. January 10, 2015, Request for Continued Examination 2–5. FF 13. On March 26, 2015, the Examiner conducted an Examiner initiated interview where Appellant “agreed to incorporate the subject matter of Claim 36 into Independent Claim 20, as well as cancel Claims 37–38, so as to better place the case in condition for allowance.” April 2, 2015, Examiner-Initiated Interview Summary. FF 14. On April 2, 2015, the Examiner mailed a Notice of Allowance with an Examiner’s Amendment amending claim 20 to include the subject matter of claim 36, and cancelling claims 36–38. Claims 20–35 were allowed. FF 15. On April 10, 2015, the Office mailed a decision on Appellant’s petition of October 3, 2014, for an unintentionally delayed benefit claim under 37 C.F.R. § 1.78. The petition was dismissed as failing to provide the reference required by 35 U.S.C. § 119(e) and 37 C.F.R. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 15 § l.78(a)(3) of the prior-filed application, which must be filed in an Application Data Sheet, unless previously submitted. FF 16. On May 4, 2015, the Office issued a corrected filing receipt listing Appellant’s domestic priority benefit. That is, Appellant received the domestic priority benefit to provisional application serial number 61/545,142, as requested in the dismissed October 3, 2014 Petition. FF 17. On August 4, 2015, the application issued as U.S. Patent 9,097,826 B2 with patent claims 1–16 corresponding to application claims 20–35 respectively (i.e., the Office renumbered application claims 20–35 as claims 1–16 in the issued patent). B. Reissue Application 15/659,037 - Prosecution History FF 18. On July 25, 2017, Appellant filed reissue application 15/659,037, seeking to reissue U.S. Patent 9,097,826 B2, issued August 4, 2015, based on Application 13/647,175, filed October 8, 2012. FF 19. With the July 25, 2017 reissue application, Appellant filed a Reissue Declaration stating: I hereby desire to broaden the scope of the claims by deleting several features recited in claim 1 of the patent, for example “arranged into a parallel array of linear strips”, “extending parallel to said linear collimating elements” and “disposed near or at a focal area of at least one of said linear collimating elements”. July 25, 2017, Reissue Declaration. FF 20. With the July 25, 2017 reissue application, Appellant filed an amendment adding new reissue claims 17 and 18. New reissue claim 17 is reproduced below: Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 16 Reissue claim 17. (New reissue claim) A collimating illumination system, comprising: a planar optical waveguide defined by a first major surface and an opposing second major surface extending parallel to said first major surface, said waveguide is configured for guiding light along a general propagation direction in response to optical transmission and a total internal reflection from at least one of said first and second major surfaces; a plurality of linear collimating elements formed in said first major surface and aligned parallel to said general propagation direction; and a plurality of light extraction elements disposed near or at a focal area of at least one of said linear collimating elements; wherein each of said light extraction elements is configured to receive light propagating within said planar optical waveguide along said general propagation direction and redirect at least a substantial portion of the received light toward said linear collimating elements and out of said waveguide; wherein said waveguide comprises a lens array having a thickness T defined from the following expression: T ≈ nR / n – 1, where R is a radius of curvature of lenses forming said lens array and n is the index of refraction of said waveguide. FF 21. On September 25, 2018, Appellant filed a second amendment adding new reissue claims 19–37. New reissue claim 19 is reproduced below: Reissue claim 19. (New reissue claim) A waveguide illumination system, comprising: a planar optical waveguide having a first major surface, an opposing second major surface extending parallel to said first major surface, a first edge, and an opposing second edge; Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 17 a light source optically coupled to the first edge, the light source comprising multiple light emitting diodes; a parallel array of rounded ridges formed in the first major surface and oriented perpendicular to the first edge, wherein each of the rounded ridges is configured to reflect light propagating in the planar optical waveguide using a total internal reflection; a two-dimensional pattern of discrete surface relief features formed in the second major surface and configured for extracting light from the planar optical waveguide; and a reflective layer associated with the second surface; wherein the spacing between individual surface relief features in the two-dimensional pattern incrementally decreases along a direction from the first edge to the second edge. FF 22.A. On July 1, 2019, the Examiner mailed a Non-final Office Action rejecting new reissue claims 19–37 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered during prosecution of the application for the patent upon which the present reissue is based. The Non-final Office Action also rejected new reissue claims 19–37 under 35 U.S.C. § 103 as being unpatentable over various combinations of Teng, Lim, Bierhuizen, Little, and Chang. The Examiner’s rejection of claims 19–37 under 35 U.S.C. § 251 relied upon the three step process of the recapture rule. FF 22.B. 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: As to [step] (1), independent claims 19 and 31 are each broader than independent claim 1 of the original patent. As compared to claim 1, claims 19 and 31 do not require at least: wherein said waveguide is a lens array having a thickness T defined from the following expression: Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 18 T ≈ nR / n – 1 where R is a radius of curvature of lenses forming said lens array and n is the index of refraction of a material of said lens array. July 1, 2019, Non-final Office Action 4. 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: As to [step] (2), in application 13/647,175, which became the ’826 patent, all of the pending claims were rejected in a first Office action mailed 1/10/2014, a second non-final action mailed 5/21/2014, and a final Office action mailed 9/19/2014. Following a request for continued examination, claims 20-38 were presented, with claims 20, 37, and 38 being independent. During an interview, the applicant agreed to incorporate the subject matter of dependent claim 36 into claim 20, and cancel claims 36-38. The application was subsequently allowed. It is apparent then that the subject matter of dependent claim 36 is a surrender generating limitation that was added to claim 20 to secure allowance; that subject matter is the precise material noted above that is not found in present claims 19 and 31. July 1, 2019, Non-final Office Action 4. 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: As to [step] (3), there is no indication that claims 19, 31 or any of their dependent claims are materially narrowed relative to the surrendered subject matter in such a way to avoid recapture. See MPEP 1412.02(II)(C). While the new claims have been narrowed in certain respects, such narrowing is in an area not related to the amendments made in the original prosecution. July 1, 2019, Non-final Office Action 4. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 19 FF 22.E. In conclusion, the Examiner determined: In light of the above applicant has recaptured subject matter surrendered during the original prosecution. The reissue claims are broadened with respect to the material surrendered during the original prosecution. Applicant should add such material to claims 19 and 31. July 1, 2019, Non-final Office Action 5. FF 23.A. On September 26, 2019, Appellant filed a third amendment amending reissue claims 19 and 37. Reissue claim 19. (Amended reissue claim) A waveguide illumination system, comprising: a planar optical waveguide having a first major surface, an opposing second major surface extending parallel to said first major surface, a first edge, and an opposing second edge; a light source optically coupled to the first edge, the light source comprising multiple light emitting diodes; a parallel array of rounded ridges formed in the first major surface and oriented perpendicular to the first edge, wherein each of the rounded ridges is configured to reflect light propagating in the planar optical waveguide using a total internal reflection such that at least some light received by the waveguide on the first edge is guided within the waveguide generally towards the second edge using optical transmission and multiple total internal reflections from each of the array of rounded ridges and the second major surface; a two-dimensional pattern of discrete surface relief features formed in the second major surface and configured for extracting light from the planar optical waveguide; and a reflective layer associated with the second surface; wherein the spacing between individual surface relief features in the two-dimensional pattern incrementally decreases along a direction from the first edge to the second edge. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 20 FF 23.B. Appellant in-part argued: According to the file on record for application 13/647,175, subject matter of dependent claim 36 was added to claim 20 as a result of Examiner-Initiated Interview of 03/26/2015 and not as a result of Applicant’s admission that the scope of claim 20 was not patentable over prior art. The Interview Summary merely states that “Applicant agreed to incorporate the subject matter of Claim 36 into Independent Claim 20, as well as cancel Claims 37-38, so as to better place the case in condition for allowance.” September 26, 2019, Amendment 11 (emphasis added). FF 24.A. On October 15, 2019, the Examiner mailed a Final Office Action again rejecting claims 19–37 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter surrendered during prosecution of the application for the patent upon which the present reissue is based. Final Action 2–4. Also, the Final Office Action again rejected claims 19–37 under 35 U.S.C. § 103 as being unpatentable over various combinations of Teng, Lim, Bierhuizen, Little, and Chang. Final Action 4– 11. FF 24.B. Also, the Final Action indicates that Original Patent claims 1–16 and Reissue claims 17 and 18 are allowable. Final Action 1. FF 24.C. Further, the Examiner determined. [I]t does not matter that this amendment was made by examiner’s amendment, rather than applicant making the amendment. Whether an amendment is actually physically made by the examiner or the applicant, the applicant must approve of any substantive amendment, and did so here. The amendment is made on applicant’s behalf, therefore it can be taken as being the same as if applicant had made the amendment itself. Furthermore, MPEP 1412.02(II)(B)(2) states, in an example illustrating surrender by amendment: “The above result [of improper recapture] would be the same whether the addition of Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 21 limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.[”] Final Act. 12–13 (emphasis added). 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. § 103 As to the rejections under 35 U.S.C. § 103, we separately address claims 19, 21, 27, 31, 35, and 36. A.1. § 103 - Claim 19 A.1.a. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 103. The primary reference of Teng fails to disclose a planar waveguide and, as shown below, only discloses a tapered light guide plate (element 310). Appeal Br. 9. We are unpersuaded by Appellant’s argument. Appellant does not address the actual reasoning of the Examiner’s rejection. Instead, Appellant attacks the Teng reference singly for lacking a teaching that the Examiner relied on a combination of Teng and Lim to show. In particular as to the aspect disputed by Appellant, the Examiner reasoned that in Teng “the major surfaces are not parallel. Lim shows a similar waveguide with parallel major surfaces.” Final Act. 5. One cannot show nonobviousness by attacking references individually when the rejection is based on a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); see Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 22 also In re Keller, 642 F.2d 413, 425 (CCPA 1981) (explaining the relevant inquiry is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references). A.1.b. Also, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 103. The Examiner takes an erroneous position that it would have been obvious to provide a waveguide having parallel major surfaces as a simple substitution of one known element for another to obtain predictable results, citing a secondary reference of Lim which discloses a planar waveguide with parallel surfaces. In response, Appellant respectfully submits that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385, 1396 (2007). The Examiner fails to demonstrate there would have been a suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to replace the tapered light guide plate 310 of Teng with a planar light guide having parallel major surfaces. Additionally, Examiner fails to establish a reasonable expectation of success for using such a planar light guide and parallel major surfaces in Teng’s device. For example, as a matter of optics, replacing a wedge-shaped light guide with a planar light guide would drastically reduce the light extraction rate and may thus result in a reduced useful light output from Teng’s device, hampering its utility. This alone would disincentivize one skilled in the art to modify Teng in view of Lim, as suggested by the Examiner, which is by itself fatal to the obviousness rejection. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 23 The Examiner does not dispute that the result of the Teng- Lim combination can be suboptimal. Yet, the Examiner maintains that the rejection sufficiently established that the result of the combination would have been predictable and that there was a reasonable expectation of success in making the combination. Appellant respectfully disagrees. It is unclear why there would have been a reasonable expectation of success in making the combination, especially in view of reduced efficiency/utility of the combined structure compared to Teng’s device alone. Furthermore, when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. In KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007); see also MPEP 2141(I). The Examiner does not provide any rationale why one skilled in the art would be motivated to substitute the wedge-shaped light guide plate of Teng with a planar light guide of Lim, especially in view of the apparent lack of any advantages it could provide. Appeal Br. 10–11 (emphasis added). We are unpersuaded by Appellant’s arguments. The Examiner relied on Lim to “show[] a similar waveguide with parallel major surfaces.” Final Act. 5. The Examiner then reasoned that it was “a simple substitution of one known element for another to obtain predictable results.” Id. We agree with the Examiner’s reasoning. First, Appellant’s asserted requirement that the Examiner must “demonstrate there would have been a suggestion or motivation” has no basis in the case law. Appellant’s assertion does not take into account that the Court repudiated any requirement that an explicit teaching, suggestion, or motivation is required to show obviousness. See KSR, 550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of Appeals.”). Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 24 Rather, the requirement is only that the Examiner show “the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis added). Although “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Second, Appellant’s argument that the Teng-Lim combination is suboptimal (i.e., “reduced useful light output”) is essentially a “teaching away” argument. We find this argument unpersuasive. “[J]ust because better alternatives exist in the prior art does not mean that an inferior combination is inapt for obviousness purposes.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). “[O]ur case law does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). “[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Further, as the United States Court of Appeals for the Federal Circuit has counseled: A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 25 following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. . . . [I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation omitted). Appellant does not demonstrate that the Teng-Lim combination would be a failure or that an artisan would not have had a reasonable expectation of success in combining the teachings and suggestions of Teng and Lim. Third, Appellant misreads the Court’s analysis in KSR. There is no requirement that an examiner must provide “advantages” that result from the proposed combination of Teng and Lim.6 Rather the quoted “combination must do more than yield a predictable result” is a requirement of any patent that “claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field.” KSR, 550 U.S. 398 at 416. 6 For example, if it is well-known that a screw and a nail can hold together two particular components equally well, it may be obvious that a screw and nail are interchangeable, even though no ‘advantage’ exists for either one. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 26 A.1.c. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 103. Claim 19 further recites “. . . wherein each of the rounded ridges is configured to reflect light propagating in the planar optical waveguide using a total internal reflection such that at least some light received by the waveguide on the first edge is guided within the waveguide generally towards the second edge using optical transmission and multiple total internal reflections from each of the array of rounded ridges and the second major surface . . .” (emphasis added). Teng clearly fails to disclose rounded ridges configured to reflect light propagating in the planar optical waveguide using a total internal reflection. Teng further fails to disclose the rounded ridges being configured to allow for guiding light within a waveguide generally towards the second edge using optical transmission and multiple total internal reflections from each of the array of rounded ridges and the second major surface. Appeal Br. 12. We are unpersuaded by Appellant’s argument. Appellant states: The present invention relates to light emitting waveguides such [as] light pipes, optical fibers or planar waveguides provided with a series of optical elements distributed along the optical path to provide for a controlled illumination pattern. Vasylyev, US 9,097,826 B2 at col. 1:39–42. Conventionally, illumination systems incorporating optical waveguides use the Total Internal Reflection (TIR) as the means for light propagation through the waveguide which is usually made from a transparent dielectric material. The waveguides comprise a core, commonly of an inorganic glass or polymeric plastic material, which can be surrounded by air in which case the light propagation by means of TIR can occur for the broadest range of propagation angles for a given core material. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 27 Vasylyev, US 9,097,826 B2 at col. 1:51–59. We are unpersuaded by Appellant’s argument. We determine that an ordinarily skilled artisan would understand Teng’s “light guide unit” is an optical waveguide, and by Vasylyev’s (i.e., Appellant’s) statement, it was conventional to use total internal reflection in waveguides. A.1.d. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 19 under 35 U.S.C. § 103. Claim 19 further recites “ . . . a parallel array of rounded ridges formed in the first major surface . . . ” [of a planar optical waveguide]. None of the asserted references disclose this limitation. Teng, specifically, only discloses elements 320 (rod lenses) being disposed on top of the first surface 312 of the light guide 310 (para 0029, lines 14-15; Fig. 2A). Appeal Br. 15. Regardless of being shown as separated by a dashed line and being taught to be integrally formed, the rod lenses 320 are still disposed on top of the first surface 312 of the light guide plate 310 (para [0029], lines 14-15; Fig. 2A). Accordingly, the rod lenses 320 are still not a part of the light guide plate 310 and not a part of any of its surfaces since they are formed externally on the surface 312 of the light guide plate (e.g., externally attached to it). On a related note, the dashed line in Fig. 2A clearly denotes an outer surface (surface 312) of the light guide plate 310. Thus, the rod lenses 320 cannot be reasonably regarded as being formed in a surface of the light guide plate 310. In this regard, Appellant respectfully submits that integrally forming the light guide plate 310 and rod lenses 320 does not necessarily create a single monolithic piece of material, especially from the optical standpoint. Appeal Br. 15–16. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 28 We are unpersuaded by Appellant’s argument. First, the argument for “a single monolithic piece of material” is not commensurate with the scope of the claim language. We do not find a “single monolithic piece of material” requirement in claim 19. Claim 19 is not explicitly so limited, nor does Appellant explain how claim 19 would be inherently so limited, nor do we find alternative language that would similarly mandate the argued limitation. Second, contrary to Appellant’s assertion, we agree with the Examiner that integrally forming (Teng ¶¶ 11, 29) the light guide plate 310 and the rod lenses 320 discloses the claimed “parallel array of rounded ridges formed in the first major surface.” Third, even if we adopt Appellant’s restrictive assertion that integrally forming the light guide plate 310 and the rod lenses 320 does not disclose the claimed limitation, such integrally forming is more than sufficient to suggest the claimed “parallel array of rounded ridges formed in the second major surface.” A.2. § 103 - Claim 21 Appellant raises the following argument in contending that the Examiner erred in rejecting claim 21 under 35 U.S.C. § 103. Appellant respectfully disagrees with the Examiner’s position that Teng teaches cylindrical lenses having a circular cross section with a predefined radius of curvature. The disclosure of Teng is completely silent on the issue and the drawings presented in this reference do not allow to determine the shape of the rod lenses. Appeal Br. 17 (emphasis added). Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 29 We are unpersuaded by Appellant’s argument because Teng states: Each of the rod lenses 320 extends along a first direction Dl and has a curved surface C curving in a second direction D2. In this embodiment, the curved surfaces C of the rod lenses 320 are convex surfaces, for example, cylindrical surfaces, elliptic cylindrical surfaces, or other shapes of convex surfaces. Teng ¶ 29. [A] thickness T of the light guide plate 310 approximately falls within a range from 0.5 mm to 5 mm, and a pitch A of the rod lenses 320 approximately falls within a range from 24 μm to 50 μm; that is, a radius of curvature of the curved surface C approximately falls within a range from 12 μm to 25 μm. Teng ¶ 31. A.3. § 103 - Claim 31 A.3.a. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 31 under 35 U.S.C. § 103. It is beyond dispute that the asserted reference of Teng must teach or suggest each and every claim feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added). Independent claim 31 recites “a lenticular lens array formed from a sheet of optically transmissive dielectric material”. Teng merely teaches rod lenses 320 arranged in an array but fails to disclose a lenticular lens array formed from a sheet. The Examiner argues that the lens array 320 and the guide plate 310 formed into an integral unit can be considered together to be a sheet of optically transmissive material Appellant respectfully disagrees. Although the term “sheet” is not defined in the '826 patent, the '826 inventor used this term in its ordinary, everyday sense, i.e., to describe something thin and flat with generally uniform thickness and a fairly broad surface relative Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 30 to its thickness, which is also what one of ordinary skill in the art understands as “sheet”. Accordingly, the term “sheet” recited in claim 31 should be interpreted as a broad and thin piece of material with generally uniform thickness. In contrast, the lens array 320 and the guide plate 310 form a relatively thick (compared to its length and width dimensions), wedge-shaped plate structure which is neither flat nor having a uniform thickness (see, e.g., Fig. 2A and Fig. 2B). Appeal Br. 18 (emphasis added). We are unpersuaded by Appellant’s argument. First, Appellant’s particular reliance on Royka is ill-founded subsequent to KSR. Royka is based on the now limited pre-KSR teaching-suggestion-motivation theory of § 103 rejection. Appellant fails to acknowledge the modifying effect on Royka of the Court’s Decision in KSR. The appropriate rule subsequent to KSR is more correctly that to establish a prima facie case of obviousness of a claimed invention, all of the claim limitations must be taught, suggested, or otherwise rendered obvious by the prior art in light of the knowledge of a person of ordinary skill in the art. We evaluate Appellants’ argument and Examiner’s rejection based on the Court’s Decision in KSR, rather than the pre-KSR basis set forth by Appellant. Second, contrary to Appellant’s assertion, we determine that the ordinary meaning of “sheet” is not Appellant’s restrictive “something thin and flat with generally uniform thickness and a fairly broad surface relative to its thickness.” Appeal Br. 18. Rather, we determine the most relevant definition of a “sheet” is “3. a relatively thin, usually rectangular form, piece, plate, or slab, as of photographic film, glass, metal, etc.” (The Random House Dictionary Of The English Language; 2d Ed. Unabridged; Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 31 1987). This definition does not include the “flat” or “uniform” requirements argued by Appellant. Third, Appellant’s assertion that Teng’s plate structure is relatively thick is contradicted by the thickness range Teng sets forth for the light guide plate 310 of approximately 0.5 mm to 5 mm. Teng ¶ 31. Fourth, even if we adopt Appellant’s restrictive assertion as to the “sheet” limitation. Appellant overlooks that the claim limitation “a lenticular lens array formed from a sheet” is a statement of the process by which the array is made and is not a limitation on the shape of the array. Appellant appears to be construing the limitation as though it reads “a lenticular lens array formed as a sheet,” i.e., Appellant is construing it as a limitation on the shape of the array. Further, a product-by-process limitation on how an apparatus is made only requires that the Examiner show the apparatus, not that the Examiner show that the apparatus was made by the same process. In re Hirao, 535 F.2d 67, 69 (CCPA 1976) (“[I]t is the patentability of the product claimed and not of the recited process steps which must be established.”). A.3.b. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 31 under 35 U.S.C. § 103. Independent claim 31 further recites “. . . a two- dimensional pattern of discrete surface relief features formed in an opposing second surface . . .” [of a lenticular lens array]. Teng fails to disclose this limitation and merely discloses diffusion net points 318 which are located at surface 314 the light guide plate 310 and do not extract any light from a lens array. The diffusion net points 318 of Teng are located at surface 314 Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 32 the light guide plate 310 which is a different optical element from rod lenses 320 (para [0030], Fig. 2A, Fig. 2B). Independent claim 31 further recites “ . . . a light source optically coupled to an edge of the lens array . . . ”. Teng clearly fails to tech or suggest this limitation. Teng merely teaches a light source illuminating the light incident surface 316 which is a part of the light guide plate 310 and not a part of the rod lenses. Appeal Br. 18–19. We are unpersuaded by Appellant’s argument. These arguments are premised on Teng’s rod lenses and light guide plate being different elements. This is a variation of the claim 19 argument addressed above at section A.1.d. As above, we agree with the Examiner that integrally forming (Teng ¶¶ 11, 29) the light guide plate 310 and the rod lenses 320 discloses the lens array structure as claimed. Also, again, even if we adopt Appellant’s restrictive assertion as to integrally forming the light guide plate 310 and the rod lenses 320, Teng’s integrally forming is more than sufficient to suggest the claimed lens array structure. A.3.c. Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 31 under 35 U.S.C. § 103. [A]s explained above in reference to claim 19, there is no evidence that the device of Teng will necessarily be capable of producing at least some rays of light that will have an angle of incidence such that multiple total internal reflections could occur at rod lenses 320. Appeal Br. 21. We are unpersuaded by Appellant’s argument. This argument repeats the claim 19 argument addressed above at section A.1.c. As above, we again determine that an artisan would understand Teng’s “light guide unit” is an Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 33 optical waveguide, and by Appellant’s statement (col. 1:39–42, 1:51–59) it is conventional to use total internal reflection in waveguides. A.4. § 103 - Claim 35 Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 35 under 35 U.S.C. § 103. Appellant respectfully disagrees with the Examiner’s position that Teng teaches a lens array configured to direct at least a portion of light towards a perpendicular to the lens array. Teng is completely silent on the issue and Fig. 2B only shows light rays directed at non-perpendicular angles. Appeal Br. 22. We are unpersuaded by Appellant’s argument. At a minimum, it is inherent to the structure in Teng that the lens array is configured to direct “at least a portion of light” towards a perpendicular to the lens array. The prior art shown in Appellant’s Figure 1 reflects this conclusion. We note that one of Appellant’s stated but unclaimed improvement is as follows: Accordingly, substantially all rays in the divergent beam redirected by reflector 8 may be effectively collimated thus producing a highly directional beam at least in a plane which is perpendicular to the longitudinal axis of waveguide 4. Vasylyev, US 9,097,826 B2 at col. 10:53–56. A.5. § 103 - Claim 36 Further, Appellant raises the following argument in contending that the Examiner erred in rejecting claim 36 under 35 U.S.C. § 103. Appellant respectfully disagrees with the Examiner’s position that the lenses [in Teng] guide light by total internal reflection. There is nothing in Teng’s disclosure which would indicate that the rod lenses 320 guide light by TIR. In this regard, Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 34 Appellant notes that guiding light by TIR is not the same as mere TIR reflections of some light scattered within Teng’s device, e.g., as alleged by the Examiner in reference to claim 19. Although the term “guide light using a total internal reflection” is not specifically defined in the claims, it must be interpreted in light of the specification and ordinary sense used in the field of optical waveguides. Appeal Br. 22. We are unpersuaded by Appellant’s argument. Essentially, this argument repeats the claim 19 argument addressed above at section A.1.c. As above, we again determine that an artisan would have understood Teng’s “light guide unit” to be an optical waveguide, and by Appellant’s statement (col. 1:39–42, 1:51–59) it was conventional to use total internal reflection in waveguides. B. Claim 27 requires “wherein each of the surface relief features includes multiple corrugations defining a plurality of surfaces sloped at an angle with respect to a prevalent plane of the second major surface.” The Examiner determines that “Little shows a backlight having a waveguide with surface relief features, and the features may be . . . corrugations (Fig. 5A).” Final Act. 8. Appellant raises the following argument in contending that the Examiner erred in rejecting claim 27 under 35 U.S.C. § 103. [In the Examiner’s] asserted Teng-Little combination, each surface relief feature would only include a single corrugation (formed by an individual groove) and would fail to include multiple corrugations, thus failing to show each and every feature of claim 27, which is fatal for the obviousness rejection. Appeal Br. 17. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 35 The Examiner responds that: The examiner disagrees that the reference lacks the limitation because a “surface relief feature” can be read broadly. One may call a grouping of several corrugations a surface relief feature, in which case each would include multiple corrugations. Ans. 11. Appellant further argues: Regarding claim 27, Appellant respectfully disagrees with the Examiner’s position that one may call a grouping of several corrugations a surface relief feature, in which case each would include multiple corrugations. As explained in the Appeal Brief at 17, Little merely shows grooves which are discrete elements separated from each other by smooth portions of the surface. Claim 27 requires that each surface relief feature in a two- dimensional pattern of discrete surface relief features includes multiple surface corrugations. Accordingly, the Examiner’s proposed interpretation that grouping of several discrete corrugations and considering them a single surface relief feature including multiple corrugations is improper. Reply Br. 14–15. We agree with Appellant that “grouping of several discrete corrugations and considering them a single surface relief feature including multiple corrugations is improper.” We are persuaded there is insufficient articulated reasoning to support the Examiner’s determination that Teng, Lim, Bierhuizen, and Little suggest “the surface relief features includes multiple corrugations defining a plurality of surfaces” as required by claim 27. Therefore, we further conclude that there is insufficient articulated reasoning to support the Examiner’s final conclusion that claim 27 would have been obvious to one of ordinary skill in the art at the time of Appellant’s invention. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 36 C. § 251 - Panel’s Recapture Determination C.1. Adoption of Examiner’s Recapture Analysis As shown at FF 22.A.–22.E. above, in the Non-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 “applicant has recaptured subject matter surrendered during the original prosecution. The reissue claims are broadened with respect to the material surrendered during the original prosecution.” FF 22.E. We agree. Further, the Examiner points out that there “is no indication that [reissue] claims 19, 31 or any of their dependent claims are materially narrowed relative to the surrendered subject matter in such a way to avoid recapture.” FF 22.D. We adopt the Examiner’s three-step recapture analysis as our own. C.2. Disagreement with Appellant’s First Recapture Argument In the Appeal Brief, Appellant does not dispute the accuracy of the three steps of the Examiner’s recapture analysis. Rather, Appellant contends: [T]he recapture rule does not apply where there is no evidence that amendment of the originally filed claims was in any sense an admission that the scope of that claim was not in fact patentable, Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826[] (Fed.Cir.1984). Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 37 According to the file on record for application 13/647,175, subject matter of dependent claim 36 was added to claim 20 as a result of Examiner-Initiated Interview of 03/26/2015 and not as a result of Applicant’s admission that the scope of claim 20 was not patentable over prior art. The Interview Summary merely states that “Applicant agreed to incorporate the subject matter of Claim 36 into Independent Claim 20, as well as cancel Claims 37-38, so as to better place the case in condition for allowance.” Note that the Examiner of application 13/647,175 did not reject any claims filed in request for continued examination [RCE filed January 10, 2015], which originally presented claims 20-38, and that Applicant did not present any amendments or arguments regarding the patentability of the original scope of those claims. Accordingly, there is no evidence that Applicant in any sense admitted that the scope of claim 20 was not in fact patentable, which is fatal for applying the recapture rule for the instant application. See In re Petrow, 402 F.2d 485, 488[] (CCPA 1968); see also Ball Corp. v. United States, 729 F.2d 1429 (Fed.Cir.1984). The Examiner further argues by citing MPEP 1412.02(11)(8)(2), which states: “The above result [of improper recapture] would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an Examiner’s amendment with authorization by applicant.” However, this passage from [the] MPEP has been misapplied to support the rejection. MPEP 1412.02(II)(B)(2) refers to the case where “The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application.” (emphasis added). However, in the instant case, there was no outstanding rejection or objection of then-pending set of claims in application 13/647, 175 (the ’175 application). The Examiner of the ’175 application did not reject any claims filed in the RCE. Furthermore, Applicant of the ’175 application did not present any amendments or arguments regarding the patentability of the original scope of those claims. Accordingly, Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 38 there is no evidence that Applicant of the ’175 application in any sense admitted that the scope of claim 20 was not in fact patentable, which is fatal for applying the recapture rule for the instant application. Appeal Br. 6–7 (emphasis added). Essentially, Appellant argues the Examiner did not reject any claims during the prosecution of U.S. Patent 9,097,826 B2 because its prosecution history starts with the filing of the request for continued examination (RCE) on January 10, 2015. FF12. That is, Appellant argues the prosecution history of U.S. patent application 13/647,175, from its original filing on October 8, 2012, until the filing of the RCE on January 10, 2015 (see FF 1– FF 11) is separate from and unrelated to the prosecution history of U.S. patent application 13/647,175, from the filing of the RCE on January 10, 2015 until the application issued as U.S. Patent 9,097,826 B2 on August 4, 2015 (see FF 12–FF 17). We disagree. Appellant is simply mistaken in arguing that the prosecution history U.S. Patent 9,097,826 B2 starts with the filing of the RCE. The law is well- established that the prosecution history of an issued patent is the entire prosecution history of its relatives. For example, in one case involving a family of patents, the Federal Circuit held: [A] patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application. MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1316 (Fed. Cir. 2010). [T]his court reviews a patent family’s entire prosecution history when applying both the rule against recapture and prosecution history estoppel. MBO Labs., Inc. v. Becton, Dickinson & Co. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 39 Id., 602 F.3d at 1318. We review the entire prosecution history of U.S. Patent 9,097,826 B2. Contrary to Appellant’s argument, we determine that new claims 20–38 filed with the RCE on January 10, 2015 (FF 12) were filed as an amendment to replace claims 16–19 and overcome the rejection of claims 16–19 under 35 U.S.C. § 102(b) as being anticipated by Vasylyev (US PUB 2010/0278480 Al) (FF 9). Also, we agree with the Examiner (FF 24.C.) that the Examiner’s Amendment was made as an additional amendment by Appellant to overcome the prior art. See Notice of Allowance 2–3 (Apr. 2, 2015) (“The following is an examiner’s statement of reasons for allowance: . . . The prior art fails to teach or suggest . . . wherein the waveguide is a lens array having a thickness T defined from the following expression: 𝑇𝑇 = 𝑛𝑛𝑛𝑛 𝑛𝑛−1 , where R is a radius of curvature of lenses forming the lens array and n is the index of refraction of a material of the lens array,” i.e., the language from dependent claim 36 that was moved into independent claim 20). Notably, “a surrender can occur by way of arguments or claim changes made during the prosecution of the original patent application.” Hester, 142 F.3d at 1480–81. Moreover, “the scope of surrender is not limited to what is absolutely necessary to avoid a prior art reference; patentees may surrender more than necessary.” Tech. Props. Ltd. v. Huawei Techs. Co., 849 F.3d 1349, 1359 (Fed. Cir. 2017). Further, we determine “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.” MBO Labs., Inc. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 40 v. Becton, Dickinson & Co., 602 F.3d 1306, 1314 (Fed. Cir. 2010) (emphasis added). C.3. Disagreement with Appellant’s Second Recapture Argument As a second argument, Appellant contends: [T]he only reference asserted in the Office Action immediately preceding the RCE was Vasylyev (U.S. Publication 2010/0278480) from the same inventor. However, Vasylyev did not even qualify as prior art. As explained by the applicant of the ’175 application in communication dated [08/09/2014], the ’175 application claimed priority from U.S. provisional application 61/545,142 filed on October 8, 2011. The cited reference of Vasylyev was from the same inventor and was dated Nov. 4, 2010, which is less than a year prior to the ’175 application. [Page 4.] The applicant of the ’175 application initially claimed the priority benefit in the specification of the ’175 application’s but not in the ADS as originally filed, but subsequently filed a corrected ADS and a petition for an unintentionally delayed benefit claim under 37 CPR 1.78, at the direction of the ’175 application examiner, all of which occurred prior to the Examiner-Initiated Interview of 03/26/2015. At the time of the interview, both the applicant and the examiner of the ’175 application were aware of this and the fact that the benefit claim to the provisional application 61/545,142 was being processed by the PTO (a corrected filing receipt including the priority benefit claim to 61/545,142 application was issued by PTO shortly after that on 05/04/2015, automatically disqualifying Vasylyev as prior art and obviating any potential grounds of rejections over that reference). Accordingly, at the time of the Examiner-initiated amendment was made, there was no indication that the claims other than claim 36 would have been rejected, especially considering that no proper prior art references were being asserted at that time. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 41 Appeal Br. 8 (emphasis and formatting added). We are unpersuaded by Appellant’s argument. First, contrary to Appellant’s assertion that Vasylyev did not even qualify as prior art, we determine that Vasylyev (US PUB 2010/0278480 Al) was properly prior art to the 13/647,175 application until the Office issued the corrected filing receipt listing Appellant’s domestic priority benefit on May 4, 2015. FF 16. Second, because Vasylyev was properly prior art as to the 13/647,175 application until May 4, 2015, contrary to Appellant’s assertion that at the time of the Examiner-initiated amendment no proper prior art references were being asserted, the Vasylyev reference was still at issue against claims 16–19 (even though replaced by claims 20–38). Third, even though we may agree that Vasylyev was removed as prior art (FF 16) subsequent to Appellant surrender-generating amendments (FF 12–FF 14), that alone does not permit a reissue to remove the prior surrender as an error under 35 U.S.C. § 251 because we determine that the amendments were a deliberate choice by Appellant, thus the surrender was a deliberate choice by Appellant. Some of our recapture decisions explain that “[e]rror under the reissue statute does not include a deliberate decision to surrender specific subject matter in order to overcome prior art,” Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 996 (Fed. Cir. 1993) (emphasis added), and that the prerequisite error for a reissue can exist if “there is no evidence that the [applicant] intentionally omitted or abandoned the claimed subject matter.” Ball Corp., 729 F.2d at 1435-36 (emphasis added). But these cases do not suggest that the patentee’s subjective intent is pertinent to the question of surrender. These decisions simply distinguish between a patentee’s inadvertent “error” (for which Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 42 the reissue statute provides a remedy), and a patentee’s “surrender” (for which the recapture rule prevents a reissue). 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. This is because the recapture rule is aimed at ensuring that the public can rely on a patentee’s admission during prosecution of an original patent. Kim, 465 F.3d at 1322–23 (emphasis added, footnote omitted). C.4. Appellant Was Not Without Remedy To Undo The Surrender We note that there was a remedy available to Appellant to undo the surrender, but only if that remedy was applied during the original prosecution. Subsequent to issuance of the corrected filing receipt listing Appellant’s domestic priority benefit on May 4, 2015 (FF 16), but prior to U.S. Patent 9,097,826 B2 issuing on August 4, 2015, Appellant was free to file a second Request for Continued Examination reversing the effect of the surrender-generating amendments (by undoing those amendments). Appellant did not select that path. Rather, Appellant permitted application 13/647,175 to proceed to issue as U.S. Patent 9,097,826 B2. Typically, if an applicant files a patent application disclosing and claiming one invention and later realizes that the specification discloses a second or broader invention, he may seek coverage of those additional claims pursuant to 35 U.S.C. § 120, which allows for continuing applications to claim the priority date of earlier applications. One type of continuing application is a continuation application. A continuation application is “a second application for the same invention claimed in a prior nonprovisional application and filed before the original prior application becomes abandoned or patented.” Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 43 MPEP § 201.07 (9th ed. Mar. 2014); see also 37 C.F.R. § 1.53(b). . . . The filing of continuations and divisionals is limited by the co-pendency requirement of § 120: a continuing application cannot be filed after the original parent application issues. In such circumstances, an applicant can only seek to add claims by filing a reissue application. 35 U.S.C. § 251. The delay in seeking to broaden the claims is not without cost. By waiting until after the patent is issued, the applicant becomes subject to two additional requirements relevant here: first, the claims must not violate the recapture rule; second, the claims must satisfy the statutory original patent requirement of 35 U.S.C. § 251. Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014) (emphasis added). CONCLUSIONS The Examiner has not erred in rejecting claims 19–37 under 35 U.S.C. § 251 as being an improper recapture of broadened claimed subject matter. The Examiner has not erred in rejecting claims 19–26 and 28–37 as being unpatentable under 35 U.S.C. § 103. Appellant has demonstrated the Examiner erred in rejecting claim 27 as being unpatentable under 35 U.S.C. § 103. The Examiner’s rejection of claims 19–37 under 35 U.S.C. § 251 as being an improper recapture is affirmed. The Examiner’s rejections of claims 19–26 and 28–37 as being unpatentable under 35 U.S.C. § 103(a) are affirmed. The Examiner’s rejection of claim 27 as being unpatentable under 35 U.S.C. § 103(a) is reversed. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 44 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19–37 251 Recapture 19–37 19–22, 28– 30 103 Teng, Lim, Bierhuizen 19–22, 28– 30 23–25, 27 103 Teng, Lim, Bierhuizen, Little 23–25 27 26 103 Teng, Lim, Bierhuizen, Chang 26 34–37 103 Teng 34–37 Overall Outcome 19–37 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 45 JEFFERY, Administrative Patent Judge, CONCURRING. I join the majority in its decision, but write separately to underscore the peculiar situation here in connection with the recapture rejection. Notably, the Vasylyev reference, on which the Examiner’s rejection was based that resulted in the narrowing amendments in the 13/647,175 application, is presumably not prior art given Appellant’s domestic priority benefit to its provisional application—priority that was granted on May 4, 2015. See FF 16.7 But when the narrowing amendments were made, the Vasylyev reference was prior art—a status that remained until May 4, 2015. As is so often the case, timing is everything—especially here, where Appellant chose to not to pursue the remedy of filing a second Request for Continued Examination (RCE) to undo the surrender of subject matter that was added to render the application allowable as the majority indicates in section C.4 of the opinion. To be sure, this RCE-based remedy would effectively “recapture” the surrendered subject matter, but do so permissibly under the unusual circumstances here, where the very rejection that resulted in that surrender was only later determined to be based on a reference that is not prior art. Notably, obviating the surrender in a copending RCE application under these extraordinary circumstances would have avoided the two additional requirements imposed in reissue, including violating the recapture rule as the majority indicates. See Maj. Dec. 42 (citing Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014)). By waiting until after the patent issued, Appellant effectively forfeited the opportunity to 7 I refer to the findings of fact enumerated in the majority decision. Appeal 2020-004825 Application 15/659,037 Patent 9,097,826 B2 46 permissibly recapture surrendered subject matter under these unusual circumstances in a copending application—a delay that essentially transformed that permissible recapture opportunity to an impermissible recapture after the patent issued. Although a harsh result, particularly since Appellant is a pro se inventor as the majority indicates (Maj. Dec. 1 n.2), there is nonetheless a cost imposed by waiting to broaden claims after a patent issues—a cost that prohibits violating the recapture rule as Appellant did here. See Antares, 771 F.3d at 1358. I, therefore, join the majority in affirming the Examiner’s recapture rejection.