Diamabrush LLC

Patent Trials and Appeals BoardJul 20, 2020

14062550 - (D) (P.T.A.B. Jul. 20, 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. 14/062,550 10/24/2013 Simon Palushaj 01016-0027 5083 109973 7590 07/20/2020 Bejin Bieneman PLC 2000 Town Center Suite 800 Southfield, MI 48075 EXAMINER KAUFMAN, JOSEPH A ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 07/20/2020 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): docket@b2iplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SIMON PALUSHAJ Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 Technology Center 3900 Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and ROBERT L. KINDER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Patentee1 appeals from the Examiner’s decision to reject Reissue Claims 1–4 and 6–19 in the application for reissue of U.S. Patent No. 8,043,144 B2 (this issued patent hereinafter referred to as “Palushaj ’144”). Patentee’s counsel presented oral argument on June 1, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Patentee to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Patentee identifies the real party in interest as “Diamabrush LLC.” Appeal Br. 3. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 2 CLAIMED SUBJECT MATTER Palushaj ’144 is directed to “a reinforced abrasive abrading and grinding device for sanding hard floors and surfaces, for example cement, stone or imitation stone.” Palushaj ’144 1:15–17. Palushaj ’144 issued on October 25, 2011, with Patented Claims 1-14, one of which (i.e., Patented Claim 1) was in independent form. On October 24, 2013, Patentee filed the present reissue application amending each of these fourteen claims, i.e., Reissue Claims 1-14. See Reissue Application Transmittal and accompanying documents. Later, a second independent claim (i.e., Reissue Claim 15) and new dependent claims, i.e., Reissue Claims 16–20, were submitted. See Response to Non-Final Office Action dated June 16, 2014. During prosecution of the present application, dependent Reissue Claims 5 and 16 were canceled. See Preliminary Amendment in the present application, dated September 18, 2017. Further prosecution ensued, resulting in Reissue Claims 1–4, 6–15, and 17–20 being the claims presently on appeal.2 Pending independent Reissue Claims 1 and 15, with markings showing the changes sought from the Patented Claims, are reproduced below and are illustrative of the claimed subject matter on appeal: 2 During this process (and perhaps inadvertently), Reissue Claims 17–20 were renumbered as Reissue Claims 16–19, respectively. Compare Patentee’s September 18, 2017 numbering with the numbering in the Examiner’s Non-Final Office Action dated March 14, 2018, which identifies claims 1–4 and 6–19 as pending and rejected (not claims 1–4, 6–15, and 17– 20). We note that Reissue Claims 6–15 were not likewise renumbered due to the similar cancellation of Reissue Claim 5. Patentee adopted this new numbering (i.e., 1–4 and 6–19) in the August 14, 2018 listing of the Reissue Claims as well as in the Appeal Brief. See Appeal Br. 22 (Claims Appendix). For consistency, we adopt this new numbering as well. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 3 1. An abrasive hard surface preparation device for use with a rotary device, the abrasive hard surface preparation device comprising: a rotatable housing; at least [one substrate layer having a first end connected] two adjacent abrasive elements each abrasive element including abrasive particles, the abrasive element operatively mounted to the housing [and an opposite second end, the at least one substrate layer including a first substrate layer and a second substrate layer arranged adjacent the first substrate layer] for substantially continuous contact with [no intermediate substrate layer disposed between the first and second substrate layers; and an abrasive material attached to at least the second end of the at least one substrate layer, at least a portion of the at least one substrate layer adjacent the abrasive material being] the hard surface, and positioned [obliquely] at an acute angle rearward from the normal motion of the housing with respect to the housing, and the [first and second substrate layers] at least two abrasive elements being separated from one another such that [the abrasive material attached to the first and second substrate layers does] adjacent abrasive elements do not contact [any portion] one another wherein the abrasive particles are configured to wear off during use, wherein at least a portion of at least one of the adjacent [substrate layer] abrasive elements adjacent the abrasive material is substantially planar, the abrasive element having a width and a length and the width is greater than the length and the abrasive element is a blade. 15. An abrasive hard surface preparation device for use with a rotary device to prepare a substrate where the substrate has a coating, the abrasive hard surface preparation device comprising: a rotatable housing; at least two downwardly extending adjacent abrasive elements, each abrasive element including an abrasive material bonded thereto, the abrasive element mounted to the housing such that the abrasive element will be in substantially Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 4 continuous contact with the substrate during use and the abrasive element is presented to the substrate at an at an acute angle rearward from the normal motion of the housing and the at least two abrasive elements being separated from one another such that adjacent abrasive elements do not contact one another wherein the abrasive material faces forward to a normal direction of rotation in order to grind a substrate without melting the material on the substrate with the abrasive material wearing off during use wherein the abrasive element is a blade having a width and a length and the width is greater than the length. REJECTION Reissue Claims 1–4 and 6–19 (i.e., all the claims on appeal) are rejected 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. See Non-Final Office Action dated June 5, 2019 (hereinafter “Non-Final Act.”), 3; see also Appeal Br. 5. BACKGROUND Independent Original Claim 7 and Original Claim 8, which depended therefrom, were filed in U.S. Application 12/707,339 on February 17, 2010 (“the ’339 application”). See Application dated February 17, 2010. The ’339 application eventually matured into Palushaj ’144. The Examiner’s first office action rejected Original Claim 7 as anticipated under 35 U.S.C. § 102(b) but only objected to Original Claim 8. See Non-Final Office Action dated September 30, 2010, Office Action Summary. In an Amendment, filed January 6, 2011, Patentee remarked, “[i]ndependent [Amended] claim 7, from which allowable [Original] claim 8 directly depends, has been rewritten to include the recitations of allowable [Original] Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 5 claim 8. [Original] Claim 8 has accordingly been cancelled.” Patentee’s Amendment dated January 6, 2011, 6. In particular, with respect to the anticipation rejection, Patentee remarked “The rejection is respectfully traversed with respect to [Original] claim[s] 7, 11 and 12. [Original] Claim 7 has been amended to include the recitations of allowable [Original] claim 8.” Id. At the same time, Patentee stated, “[n]ew claims 14-27 have been added.” Id.; see also Appeal Br. 14 (“Applicant also added new claim 18 – which also included the subject matter of previously allowed [Original] claim 8.”). Thereafter, in a Final Office Action dated March 30, 2011, the Examiner stated that Amended claim 7 was “allowed,” but that New Claims 18-27 were rejected as (a) being “indefinite,” for lack of antecedent basis, and (b) “objected to . . . as being a substantial duplicate of claims 7, 10 and 13–17.” See Final Office Action dated March 30, 2011, 2. Patentee responded by submitting Amended Claim 18 to provide antecedent basis and by cancelling Amended Claims 1–7 and 13–17 and further amending Amended Claim 10 to depend (indirectly) from Amended Claim 18). See Patentee’s Amendment dated May 31, 2011, 2. Upon such action, the Examiner issued a Notice of Allowance and also provided a Reason for Allowance addressing the Original Claim 8 limitation that was added to both Amended Claim 7 and New Claim 18. See Notice of Allowance dated June 20, 2011, 2. The Examiner stated in the Reason for Allowance that Amended Claim 18 is allowed because the prior art of record . . . neither anticipates nor renders obvious, the substrate layer adjacent the abrasive material being positioned obliquely with respect to the housing, and the first and second substrate layers being separated from one another such that the abrasive material attached to the first and second Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 6 substrate layers does not contact any portion of the adjacent substrate layer, in combination with the rest of the limitations in [Amended] claim 18. Id. at 2. Amended Claim 18 of the ’339 application issued as Patented Claim 1, with the remaining allowed Amended Claims 9–12 and 19–27, reordered, issuing as Patented Claims 2–14 of Palushaj ’144. PRINCIPLES OF LAW The Reissue Statute allows a patentee to broaden claims in its issued patent within two years if the patentee can show “error.” 35 U.S.C. § 251.3 Yet “[n]ot every” circumstance “that might be labeled ‘error’ is correctable by reissue.” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir. 1998). One circumstance “that does not satisfy the ‘error’ requirement” of the Reissue Statute “is embodied by the recapture rule.” In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). “The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome prior art and obtain a valid patent.” Youman, 679 F.3d at 1343. The determination as to whether reissue claims violate the recapture rule involves a three-step analysis. Youman, 679 F.3d at 1343. “Under the first step, we determine whether and in what aspect the reissue claims are broader than the patent claims.” Youman, 679 F.3d at 1343 (internal quotations omitted). Under the second step, we “determine whether the 3 Palushaj ’144 issued on October 25, 2011, and the application on appeal was filed on October 24, 2013, which is within the two-year window required by the Reissue Statute. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 7 broader aspects of the reissue claims relate to surrendered subject matter.” Youman, 679 F.3d at 1343 (internal quotations omitted). If the reissue claims are broader relative to the patented claims in a manner related to surrendered subject matter, then under the third step, we “determine whether the surrendered subject matter has crept into the reissue claim.” Youman, 679 F.3d at 1344 (internal quotations omitted). Satisfaction of these steps, and thus, violation of the recapture rule, may be avoided if “the [reissue] claims are materially narrowed in a way that avoids substantial or whole recapture of the surrendered subject matter.” Youman, 679 F.3d at 1344– 1345. The materially narrowing analysis is conducted on a limitation-by- limitation basis and the frame of reference is the original claim--the claim prior to the surrendering amendment or cancelation. See Youman, 679 F.3d at 1345, 1346; see also id. at 1347 (“[I]f the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.”). In other words, “a limitation that is added during prosecution to overcome prior art cannot be entirely eliminated on reissue because doing so would constitute recapture of the surrendered subject matter.” In re Mostafazadeh, 643 F.3d 1353, 1359 (Fed. Cir. 2011). ARGUMENTS Patentee initially contends that “Prosecution Was Improperly Re- opened.” Appeal Br. 6. Patentee references MPEP §§ 1207.03, 1207.04 in support thereof contending there was “no basis on which to reopen prosecution.” Appeal Br. 6; see also id. at 7. However, this is not a matter Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 8 within the jurisdiction of the Board; instead, it is a matter subject to a petition to the Director. See 37 C.F.R. § 1.181 (2019). For example, we have been instructed that decisions of the Examiner directly relating to the rejection of claims are subject to appeal. See In re Searles, 422 F.2d 431, 434–35 (CCPA 1970) (“because the question involved is ‘determinative of the rejection’ it is properly an appealable matter”). “These questions generally deal with the merits of the invention, involving factual determinations and the legal conclusions drawn therefrom regarding the application disclosure, the claims and the prior art.” Searles, 422 F.2d at 435. Here, however, the Examiner’s decision to reopen prosecution deals “with procedural matters, such as whether an affidavit or amendment is untimely, and formal requirements, such as whether a new application title will be required, [which] are reviewable upon petition.” Searles, 422 F.2d at 435. Our reviewing court also stated in In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971) (footnote omitted) that [t]here are a host of various kinds of decisions an examiner makes in the examination proceeding—mostly matters of a discretionary, procedural or nonsubstantive nature—which have not been and are not now appealable to the board or to this court when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. Accordingly, we do not address this argument presented by Patentee because it is not a matter that is subject to appeal to the Board. Patentee next focuses on the three steps set forth in MPEP § 1412.02 II addressing the recapture of previously surrendered claim language discussed above and which were also addressed by the Examiner. See Appeal Br. 8–20; Non-Final Act. 4–9. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 9 With respect to the first step of the recapture analysis, Patentee argues that “the Office has failed to set forth ‘whether, and in what respect’ [Reissue] claims 1 and 15 of the present reissue application are ‘broader in scope than the original patent claims.’” Appeal Br. 9 (emphasis omitted) (quoting MPEP § 1412.02 II). We disagree with Patentee that the Office has failed in this endeavor. This is because the Examiner explained that Reissue Claims 1 and 15 of the reissue application are broader, in at least one aspect, than the Patented Claims because they omit the language “the at least one substrate layer including a first substrate layer and a second substrate layer arranged adjacent the first substrate layer” and also “no intermediate substrate layer disposed between the first and second substrate layers” present in all the Patented Claims. Non-Final Act. 5–6; see id. at 6 (“As there is no more reference to the substrate layers and the relationship between them, the claim has been broadened with respect to these features.”); see also Reissue Claims 1 and 15 above. Patentee does not explain how the omission of claim language is not a broadening under the above guidelines. In Patentee’s Reply Brief, and challenging the Examiner’s analysis above, Patentee argues, “[t]he Office has not articulated its analysis of the scope of the relevant claims. Rather, it has noted claim language differences.” Reply Br. 2. Patentee bases this assertion on the Examiner’s statement: Based on the disclosure and the drawings, the scope of the [Reissue] claims has been changed from the relationship between layers 30 (the first substrate layer) and 32 (the second substrate layer) to the relationship between the various portions 14 (each being an abrasive element) as seen in Figure 1. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 10 Reply Br. 2 (citing Non-Final Act. 6; see also Ans. 11). Patentee contends “‘relationship’ is not recited in the original or pending claims.” Reply Br. 2; see also id. at 3. However, a reading of the above statement by the Examiner provides no indication that the term “relationship” is recited in Reissue Claim 1. Instead, after the Examiner’s comparison of Patented Claim 1 and Reissue Claim 1 (see Appeal Br. 22–25 (Claims Appendix)), the Examiner concluded that the thrust of the Reissue Claims now focuses on “two adjacent abrasive elements” 14 rather than adjacent “first and second substrate layers” (30, 32) of a single abrasive element 14, as recited in Patented Claim 18. See Non-Final Act. 6; Ans. 11. Further, the above noted statement was employed by the Examiner to explain how Reissue Claim 1 is “broader in scope than the original patent claims” (MPEP § 1412.02 II) because the language which addressed the first and second substrate layers is now deleted in favor of a new limitation directed to “two adjacent abrasive elements.” See Appeal Br. 22. In view of such discussion by the Examiner, Patentee’s contention that “[t]he Office has not articulated its analysis of the scope of the relevant claims” (Reply Br. 2) is not persuasive.4 With respect to the second step of the recapture analysis, the thrust of Patentee’s argument is that, regarding the distinctions made by the Examiner between Original Claim 7 and Original Claim 8, “Applicant merely accepted allowable material – which the Office has miscast as a surrender.” Appeal Br. 10; see also id. at 12 (“Applicant surrendered no subject matter by 4 The Examiner states, “[t]he fact that appellant disagrees with the analysis does not mean that the analysis has not been done.” Ans. 15. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 11 simply accepting allowable subject matter.”), 15 (“Applicant simply accepted subject matter that was considered allowable in the first instance.”); Reply Br. 4 (“merely accepting subject matter indicated as allowable provides no basis for surrender”). In other words, “[e]quating the acceptance of subject matter with surrender – without substantive analysis – is wrong on its face.” Appeal Br. 10. Further, “[w]ithout surrender, there is no recapture.” Reply Br. 5. Thus, Patentee contends, “[t]he Office has not positively determined what may have been surrendered in the prosecution of the original patent – it has just concluded so because of an amendment.” Appeal Br. 10; see also Tr. 3:18–4:14. First, Patentee’s statement that the Examiner has not “positively determined what may have been surrendered” (Appeal Br. 10) during prosecution is incorrect. This is because the Examiner has specifically identified certain passages in Original Claim 8 that were subsequently incorporated into Amended Claim 7, and which can also be found in both New and Amended Claim 18 (which matured into Patented Claim 1 of Palushaj ’144). See Non-Final Act. 5–6; Ans. 11. Patentee acknowledges this. See Appeal Br. 14. Second, Patentee’s argument that no surrender of this language occurred but, instead, the Examiner “just concluded so because of an amendment” (Appeal Br. 10) is contrary to current case law. It is well known that arguments presented by Patentee can be employed as evidence of surrender. See Hester, 142 F.3d at 1481 (Fed. Cir. 1998) (citations omitted) (“Arguments made to overcome prior art can equally evidence an admission sufficient to give rise to a finding of surrender.”). In the matter Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 12 before us, Patentee specifically remarked, “The rejection is respectfully traversed with respect to [Original] claim[s] 7, 11 and 12. [Original] Claim 7 has been amended to include the recitations of allowable [Original] claim 8.” Patentee’s Amendment dated January 6, 2011, 6. As a consequence, [Original] claim 7 “has been rewritten to include the recitations of allowable [Original] claim 8.” Id. Furthermore, we have been instructed that a claim amendment may serve to establish surrender. See Hester, 142 F.3d at 1481 (“Amendment of a claim is not the only permissible predicate for establishing a surrender.”); see also Youman, 679 F.3d at 1343 (“The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome prior art and obtain a valid patent.”). Thus, Patentee’s contention that “Applicant did not ‘argue’ that the incorporation of allowable subject matter overcame the prior art” (Appeal Br. 11), but remained silent instead, does not, even if true, wholly shield Patentee from a finding that there was claim surrender. This understanding is further buttressed because the Hester decision, when addressing a specific passage in In re Clement, 131 F.3d 1464 (Fed. Cir. 1997) stated, “[t]his statement in Clement indicates that a surrender can occur by way of arguments or claim changes made during the prosecution of the original patent application” (italics in original).5 Hester, 142 F.3d at 1480–81 (referencing Clement, 131 F.3d at 1469). Thus, there are other non-argument methods (i.e., overt actions) by which it can be ascertained if 5 The Examiner also references Clement stating “where allowable subject matter was put into independent form, recapture applies.” Ans. 12. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 13 a surrender occurred, i.e., “arguments or claim changes.” Hester, 142 F.3d at 1480. “In this regard, claim amendments are relevant because an amendment to overcome a prior art rejection evidences an admission that the claim was not patentable.” Hester, 142 F.3d at 1481 (citations omitted); see also Youman, 679 F.3d at 1343 (“that the patentee intentionally surrendered during the original prosecution”). See also Ex parte Stefan Deferme, 2016 WL 4395860 (PTAB 2016). In the matter before us, it is abundantly clear that the limitations of Original Claim 7 alone were rejected as anticipated. See Non-Final Office Action dated September 30, 2010, 2. However, the Examiner stated (as indicated above), that the limitations of dependent Original Claim 8 “would be allowable if rewritten in independent form” including the limitations of Original Claim 7. Non-Final Office Action dated September 30, 2010, 5. Rather than argue the merits of the anticipation rejection, Patentee acquiesced and rewrote Original Claim 7 stating (and as also expressed above), “[i]ndependent [Original] claim 7, from which allowable [Original] claim 8 directly depends, has been rewritten to include the recitations of allowable [Original] claim 8. [Original] Claim 8 has accordingly been cancelled.” Patentee’s Amendment dated January 6, 2011, 6. Thus, such overt amendment by Patentee is indicative of an intent on the part of Patentee to amend the pending claims so as to achieve the allowability of Amended Claim 7 based on the limitations recited in Original Claim 8 that Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 14 were only objected to.6 See Ball Corp. v. U.S., 729 F.2d 1429, 1436 (Fed. Cir. 1984) (“Rarely is evidence of the patentee’s intent in canceling a claim presented. Thus, the court may draw inferences from changes in claim scope when other reliable evidence of the patentee’s intent is not available.”); Haliczer v. U.S., 356 F.2d 541 (Ct. Cl. 1966) (acquiescence in the rejection and acceptance of a patent whose claims include the limitation added by the applicant to distinguish the claims from the prior art shows intentional withdrawal of subject matter). Furthermore, in the matter before us, the Examiner has specifically identified the Original Claim 8 limitations as being the basis for the recapture rejection of Patentee’s presently pending claims. See Non-Final Act. 4–6; Ans. 11; Claims Appendix. Thus, Patentee’s premise above, that “Applicant merely accepted allowable material – which the Office has miscast as a surrender” (Appeal Br. 10), does not establish persuasively that the Examiner erred in finding that surrender did, indeed, occur. It is clear that Patentee rewrote Original claim 7 “in order to overcome prior art and obtain a valid patent.” Youman, 679 F.3d at 1343. This is confirmed by Patentee stating, “Applicant respectfully traverses the foregoing [i.e., anticipation] rejection” and that Original “Claim 7 has been amended to include the recitations of allowable claim 8.” Patentee’s Amendment dated January 6, 2011, 6. To be abundantly clear, and as expressed by Patentee, the only “traverse” of the anticipation rejection is that 6 Patentee contends “[f]inding surrender requires finding an intent to surrender.” Appeal Br. 14; see also Youman, 679 F.3d at 1343 (“that the patentee intentionally surrendered”). Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 15 “[i]ndependent [Original] claim 7, from which allowable [Original] claim 8 directly depends, has been rewritten to include the recitations of allowable claim 8.” Patentee’s Amendment dated January 6, 2011, 6. However, we have been instructed that an amendment gives “rise to a presumptive estoppel.” Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1140 (Fed. Cir. 2004).7 Due to the creation of this “presumptive estoppel,” it behooves Patentee to show otherwise, i.e., to show Examiner error on this point. Patentee’s attempts at doing so (see above), do not establish persuasively that the Examiner erred in finding claim surrender as discussed. This is especially the case in view of guidance that “[a] patentee who narrows a claim as a condition for obtaining a patent disavows his claim to the broader subject matter, whether the amendment was made to avoid the prior art or to comply with § 112.” Honeywell, 370 F.3d at 1142. Moreover, as to Patentee’s argument that independent Reissue Claims 1 and 15 are “materially narrow” in accordance with the third step of the recapture analysis, we are not persuaded of error by the Examiner on this point as well. Appeal Br. 17. Patentee seeks to explain, the ‘key limitation’ is among what remains, [so] the pending [Reissue] claims are at least ‘materially narrowed.’ The pending [Reissue] claims recite ‘at least two abrasive elements being separated from one another such that adjacent abrasive elements . . . do not contact one another.’ Thus, the ‘spacing’ 7 We also cannot help but notice the strong similarity between the facts outlined in the Honeywell case and those presently before us. However, one difference is Patentee’s addition in the present matter of New Claim 18 (which included the Original Claim 8 limitations) which ultimately matured into Patented Claim 1 of Palushaj ’144. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 16 feature of original claim 8, relative to the Gilles reference, remains. Reply Br. 5. However, Patentee does not explain persuasively how expunging Original Claim 8 limitations results, instead, in a “materially narrow” Reissue Claim 1 such that “the surrendered subject matter has crept into the reissue claim.” Youman, 679 F.3d at 1344. We have been instructed that “[p]roperly applied, the material narrowing must relate to the surrendered subject matter to prevent the recapture rule from applying.” Youman, 679 F.3d at 1347 (citing Mostafazadeh, 643 F.3d at 1359); see also id. at 1347– 48 (citing North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir. 2005) (“If the narrowing is unrelated to the surrendered subject matter, it is irrelevant for the purposes of the analysis even if it renders the reissue claim as a whole intermediate in scope relative to the patented and original claims.”). Here, Patentee does not establish how the new recitation of “at least two abrasive elements being separated from one another” is related to the Original Claim 8 language of first and second substrates arranged with “no intermediate substrate layer disposed between the first and second substrate layers.” See Appeal Br. 18 (emphasis added). Patentee also challenges the Examiner’s correlation of “layers 30 (the first substrate layer) and 32 (the second substrate layer)” made in respect to Figure 1 of Palushaj ’144. See Reply Br. 2; Non-Final Act. 6; Ans. 11. Patentee prefaces this challenge stating, “the original claims at issue only recite first and second substrate layers – and a backing layer is only introduced and recited in other dependent claims to the claims at issue (see claims 11-14 of the [’]144 patent).” Reply Br. 2; see also id. at 3, 4. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 17 Patentee thus concludes that because dependent claims 11–14 of Palushaj ’144 recite a “backing layer,” Palushaj ’144’s “backing layer” 32 cannot also serve as the second substrate layer recited in independent claim 1 of Palushaj ’144, as per the Examiner’s correlation above. See Reply Br. 2–4. We note, however, that Figure 3 of Palushaj ’144 provides a side view of abrasive element assembly 14 depicting three layers, i.e., layer 32 sandwiched between substrate layer 30 and canted section 52 of bracket 34. In view of this illustration, it is not clear how the Examiner may have erred in correlating intermediate layer 32 to the recited “second substrate layer” despite dependent claims further reciting a third “backing layer.” In other words, Patentee fails to explain persuasively why the Examiner is precluded from equating Patentee’s item 32 to the recited “second substrate layer” simply because Patentee, instead, identifies item 32 as a “backing layer.” This is especially the case when Patentee’s Specification describes the third layer 52 as providing the underlying support for items 30 and 32. See Palushaj ’144 4:51–65 (“[t]he substrate layer 30 and backing layer 32 may be affixed to bracket 34 . . . to securely clamp the two layers 30 and 32 together and secure them to the depending canted section 52”). In other words, Patentee does not establish why the above correlation by the Examiner is faulty in view of the express teachings of Palushaj ’144. Accordingly, in view of the record presented, we are not persuaded the Examiner erred in finding that pending claims 1–4 and 6–19 seek to recapture subject matter that was previously surrendered. CONCLUSION The Examiner’s rejection is AFFIRMED. Appeal 2020-003920 Reissue Application 14/062,550 Patent 8,043,144 B2 18 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–19 251 Improper Recapture of Surrendered Subject Matter 1–4, 6–19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED