Ex Parte Backman

Patent Trial and Appeal Board

Nov 7, 2012

12756653 (P.T.A.B. Nov. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DRAKE BACKMAN
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Appeal 2012-009050
Application 12/756,6531
Patent 7,356,685
Technology Center 2100
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Before ROMULO H. DELMENDO, ALLEN R. MacDONALD, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL2

1 Filed April 8, 2010, seeking to reissue U.S. Patent 7,356,685 issued April
8, 2004, based on application 11/171,266, filed July 1, 2005.
2 The real party in interest is CPTN Holdings, LLC (App. Br. 2).
Appeal 2012-009050
Application 12/756,653
Patent 7,356,685

2
STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 6-8 and 22-33. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Exemplary Claim
Exemplary claim 6 under appeal reads as follows:
A method for providing runtime input values to a computer
device during a network bootstrapping process, comprising:
providing a first set of bootstrap instructions to the computer
device;
determining a configuration file corresponding to the computer
device based at least in part on a unique attribute associated with the
computer device;
initializing a memory block with parameter values identified in
the configuration file; and
generating a second set of bootstrap instructions, wherein the
second set of bootstrap instructions is configured to:
determine the configuration file corresponding to the
computer device;
parse the configuration file corresponding to the
computer device;
parse the memory block to retrieve the parameter values
identified in the parsed configuration file; and
initiate the bootstrapping process on the computer device
with the parameter values retrieved from the parsed memory
block.

Appeal 2012-009050
Application 12/756,653
Patent 7,356,685

3
Rejections 3
The Examiner rejected claims 6-8 and 22-33 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 Ans. 4-9). 4

Appellant’s Contentions
Appellant contends that the Examiner erred in rejecting claim 6
because “Appellant did not need to (and in fact did not) ‘surrender’ any
claim scope or other subject matter to make original claim 6 allowable.”
(App. Br. 10).

ANALYSIS
We have reviewed the Examiner’s above rejection in light of
Appellant’s argument that the Examiner has erred. We agree with
Appellant’s conclusion.
There is no dispute that dependent claim 6 was allowable as filed in
the original patent application. There is also no dispute that after claim 6
was indicated as allowable during the original prosecution, Applicant
explicitly chose not to rewrite dependent claim 6 in independent form at that
point in time. However, contrary to the Examiner’s conclusion, it is not
recapture for the Applicant to now seek to patent that allowable claim 6 as
rewritten in independent form.

3 A separate rejection of claims 1-33 has been withdrawn. (Ans. 4).
4 Separate patentability is not argued for claims 7, 8, and 22-33.
Appeal 2012-009050
Application 12/756,653
Patent 7,356,685

4
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. See Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995
(Fed.Cir.1993). There can be no surrender where the original claim was
indicated as allowable. There is nothing to “regain” because, as to allowable
dependent claim 6, the Applicant never gave up anything to overcome a
rejection. That the Applicant amended original unallowable claim 1 is
simply not relevant to our analysis regarding the allowability of dependent
claim 6.

CONCLUSIONS
(1) The Examiner has erred in rejecting claims 6-8 and 22-33.
(2) Claims 6-8 and 22-33 have not been shown to be patentable on
this record.

DECISION
The Examiner’s rejection of claims 6-8 and 22-33 under
35 U.S.C. § 251 is reversed.

REVERSED

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