PTAB.US: Decisions of PTAB Patent Trial and Appeal Board Updated Daily.

Monday, November 28, 2011

clement, mostafazadeh, north american container, clement, ariad


3700 Mechanical Engineering, Manufacturing, and Products & Design
3768 Ex Parte Rubin et al 10/341,526 MILLS 103(a) MARTIN D. MOYNIHAN d/b/a PRTSI, INC. EXAMINER JUNG, UNSU


1600 Biotechnology and Organic Chemistry
1627 Ex Parte Tamura et al 11/783,590 PRATS 251/103(a) FOLEY AND LARDNER LLP EXAMINER WANG, SHENGJUN

The recapture rule “prevents a patentee from regaining through reissue the subject matter that he surrendered in an effort to obtain allowance of the original claims.” In re Clement, 131 F.3d at 1468.

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 third step of the recapture analysis . . . the court must determine whether the surrendered subject matter has crept into the reissue claim.

In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2010) (internal citations and quotation marks omitted).

“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.” Id. Thus, “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.” Id. (quoting N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005).

However, “if the reissue claim is as broad as or broader [than the canceled or amended claim] in an aspect germane to a prior art rejection, but narrower in another aspect completely unrelated to the rejection, the recapture rule bars the claim . . . .” In re Clement, 131 F.3d at 1470.

Clement, In re, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997) . . . . . . 1412.02

North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005) . . . 1412.02

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review
3616 Ex Parte Szymanski et al 10/947,077 BAHR 112(1)/102(b)/103(a) THE WEBB LAW FIRM, P.C. EXAMINER ILAN, RUTH

In effect, Appellants’ Specification and claims merely recite a description of a problem to be solved while claiming all solutions to it, covering all potential joints/linkages and sensor configurations later invented and determined to fall within the claims’ functional boundaries. This is not sufficient to satisfy the description requirement. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc) (stating that a sufficient description of a genus requires disclosure of either a representative number of species falling within the scope of the genus or structural features common to the members of the genus to permit one of skill in the art to “‘visualize or recognize’ the members of the genus”).

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