Ex Parte Deferme

Patent Trial and Appeal Board

Aug 16, 2016

11879727 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111879,727 07/18/2007
119021 7590 08/18/2016
Harness, Dickey & Pierce, PLC (Tenneco)
P.O. Box 828
Bloomfield Hills, MI 48303
FIRST NAMED INVENTOR
Stefan Deferme
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1316N-001690/REB 4686
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
NOTIFICATION DATE DELIVERY MODE
08/18/2016 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEFAN DEFERME
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
Technology Center 3900
Before STEFAN STAICOVICI, KEN B. BARRETT,
and CYNTHIA L. MURPHY, Administrative Patent Judges.
BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Stefan Deferme (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's rejection of claims 8-27 1 in reissue application
11/879,727, filed July 18, 2007. The reissue application seeks to reissue
U.S. Patent 7,070,029 B2 ("the '029 patent"), issued July 4, 2006, based on
application 10/662,544, filed September 15, 2003. We have jurisdiction
under 35 U.S.C. § 6(b ).
1 After the filing of the Notice of Appeal, the Examiner withdrew the
rejection of claims 1-27 under 35 U.S.C. § 112, second paragraph. Ans. 2.
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
We AFFIRM.
THE INVENTION
Appellants' claimed invention pertains to a shock absorber having "a
hydraulic flow control assembly operable as valves which allow greater
tunability." The '029 patent, col. 1, 11. 6-9. Claim 8, reproduced below is
the only independent claim on appeal and is representative of the subject
matter on appeal.
8. A shock absorber comprising:
a pressure tube forming a working chamber;
a piston disposed for movement in an axial direction
within said pressure tube, said piston dividing said working
chamber in the axial direction into an upper working chamber
and a lower working chamber, said piston defining a plurality
of separate fluid passages extending through said piston;
a first valve assembly engaging said piston, said first
valve assembly comprising a first disc engaging said piston to
close at least one of said plurality of fluid passages, said entire
first disc being movable in the axial direction with respect to
said piston;
a compression device operably maintaining the first valve
assembly in a closed position in contact with the piston,
wherein the first valve assembly operably opens at an
individually adjustable device opening pressure, wherein the
compression device comprises:
a first annular interface having a first surface
engaging said first disc and a second surface opposite to
said first surface, said entire first annular interface being
movable in the axial direction with respect to said piston;
and
a first interface disc having an outer portion
extending radially inward from an outermost periphery of
said first interface disc, said outer portion engaging said
2
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
second surface of said first annular interface, said first
interface disc defining an inner portion disposed radially
inward from said outer portion, said outer portion of said
first interface disc moving in the axial direction with
respect to the inner portion during axial movement of
said first annular interface to urge said first annular
interface into engagement with said first disc and said
first disc into engagement with said piston;
a piston rod attached to said piston and extending out one
end of said pressure tube, an open gap being defined between
said piston rod and said first annular interface; and
a first preload spacer attached to said piston rod, said first
preload spacer engaging said inner portion of said first interface
disc.
Appeal Br. 14--15 (Claims App.)
THE REJECTION
Before us for review is the Examiner's rejection of claims 8-27 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.
BACKGROUND2
The Examiner rejected claims 8-27, maintaining that the omission
from the claims of subject matter pertaining to the ends of the spring
(hereinafter, the "spring-end features" or similar) constitutes improper
recapture of surrendered subject matter. Final Act. 4. Appellants argue,
2 The present patent application was the subject of a previous appeal to this
Board. See Ex parte Deferme, Appeal No. 2010-008543 (BP AI Sept. 21,
2010) (affirming the rejection of claims 8-28 as anticipated by Deferme
(US 6,371,264 Bl, issued Apr. 16, 2002)).
3
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
inter alia, that the spring-end subject matter was not surrendered because it
was present in an original dependent claim (App. Br. 6) and argues that the
reissue claims contain additional elements that render the reissue claims
narrower than original claim 1 (see Reply Br. 2).
At a relatively early stage of the prosecution of the application that led
to the issuance of the '029 patent, independent claim 1 ("original claim l "3)
recited a shock absorber piston assembly comprising a piston and a plurality
of flow control devices including bleed plates. Amendment (filed Nov. 17,
2004), 2. At that same time, dependent claim 5, which depended from claim
1 through claims 2, 3, and 4, recited certain details concerning the ends of a
spring-the spring-end features. Id. Specifically, claim 5 recited:
5. The piston assembly of Claim 4, wherein the spring
comprises:
a spring engagement end fixedly engaged with a slot of
the piston rod; and
a spring force distribution end in contact \'l1ith the bleed
plate.
Id. The Examiner rejected certain claims, including claims 1--4, as
anticipated by Tamaro. Non-Final Office Action (mailed May 25, 2005), 3.
The Examiner also stated: "Claim 5 is objected to as being dependent upon
a rejected base claim, but would be allowable if rewritten in independent
3 In this decision, we refer to the claims as they stood before the pertinent
amendment as the "original" claims. See In re Youman, 679 F.3d 1335,
1344 (Fed. Cir. 2012) ("when a patentee narrows the original claim in an
effort to overcome a prior art rejection and makes arguments in support, the
patentee surrenders the subject matter broader than the patented claim"); id.
at 1343 ("The rationale underlying the rule is that the cancellation or
amendment of the original claim in order to overcome prior art is a
deliberate action .... ").
4
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
form including all of the limitations of the base claim and any intervening
claims." Id. In response, Applicant amended original claim 1 to add the
limitations of original dependent claim 5 including the limitations of
intervening dependent claims 2--4, and canceled original dependent claims
2-5. Amendment (filed August 24, 2005), 2-3, 8. Appellant characterized
the changes and the effect thereof as follows:
Claim 1 has been amended to include the limitations of
Claims 2-5 and Claims 2-5 have been cancelled. Thus,
Applicant believes Claim 1, as amended, patentably
distinguishes over the art of record.
Id. at 8. Prosecution claim 1 eventually issued as patented claim 1, reciting,
with emphasis added:
1. A shock absorber piston assembly, comprising:
a piston having a first face and an opposed second face,
the piston defining a plurality of separate fluid passages
allowing fluid communication through only the piston between
the first face and the second face;
a piston rod attached to the piston; and
a plurality of flow control devices each operably sealing
at least one of the fluid passages, including:
a first bleed plate operably contacting the first face
and a second bleed plate operably contacting the second
face;
a first blow-off disc operably contacting the first
face and a second blow-off disc operably contacting the
second face; and
a compression device operably maintaining each of
the flow control devices in a closed position in contact
with the piston; wherein
each of the flow control devices operably opens at
an individually adjustable device opening pressure; and
the compression device comprises a spring;
wherein the spring comprises:
5
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
a spring engagement end fixedly engaged with a
slot of the piston rod; and
a spring force distribution end in contact with the
first bleed plate.
The '029 patent, col. 7, 1. 34--col. 6, 1. 2.
The present reissue application was filed subsequently. Independent
reissue claim 8, the sole independent claim on appeal, was added at the time
of the filing of the reissue application and lacks the spring-end limitations.
See Amendment (filed July 18, 2007), 2-3; see also App. Br. 14 (Claims
Appendix).
ANALYSIS
"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." In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). To determine
whether reissue claims violate the recapture rule involves a three-step
analysis. Id. "Under the first step, we determine whether and in what aspect
the reissue claims are broader than the patent claims.'" Id. (internal
quotations omitted). Under the second step, we "determine whether the
broader aspects of the reissue claims relate to surrendered subject matter."
Id. (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." Id. at 1344 (internal quotations omitted).
Violation of the recapture rule under this third step may be avoided if "the
[reissue] claims are materially narrowed in a way that avoids substantial or
whole recapture of the surrendered subject matter." Id. at 1344--1345. "To
6
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
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, 1359 (Fed. Cir. 2011).
[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.
The limitation may be modified, however, so long as it
continues to materially narrow the claim scope relative to the
surrendered subject matter such that the surrendered subject
matter is not entirely or substantially recaptured.
Id. Accordingly, "[i]f the narrowing is unrelated to the surrendered subject
matter, it is irrelevant for the purposes of the analysis." In re Youman, 679
F.3d at 1347--48.
Regarding the first step of the analysis, there is no dispute that
independent reissue claim 8 is broader than the patented claims in that it
omits the language found in issued claim 1 directed to the spring-end
features. See Appeal Br. 5---6; see also Reply Br. 2 (Appellant admitting
"reissue Claims 8-27 do not include the features of original Claim 5.")
Regarding the second step, Appellant argues that Appellant did not
surrender the subject matter of original dependent claim 5 (the spring-end
features) because that subject matter was present in an original claim prior to
the pertinent amendment. See App. Br. 6; Reply Br. 5. Appellant's
argument is misplaced. The Examiner does not contend that the spring-ends
subject matter was surrendered. Rather, the Examiner maintains: "When
the appellant (who was the applicant at the time) added the structure of
claim 5 to claim 1 for the express reason to add allowable subject matter so
the application could be allowed, the subject matter of claim 1 without the
7
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
additional structure was surrendered." Ans. 3 (emphasis added); see also
Final Act. 5 (The Examiner stating "the limitations of claim 5 therefore
relate to surrendered subject matter" not that those limitations are the
surrendered subject matter) (emphasis added). We agree with the Examiner.
During the original prosecution, the Examiner rejected claims 1--4 as
anticipated but indicated that dependent claim 5, which necessarily included
all of the limitations of claims 1--4, contained allowable subject matter.
Non-Final Office Action (mailed May 25, 2005), 3. Thus, the Examiner
indicated that the spring-ends subject matter of claim 5, and not merely the
limitations of claim 1--4, is that which would render the overall claim
allowable over the prior art. By amending claim 1 to include the limitations
of claim 5, the applicant admitted that claim 1 without those spring-end
features was not patentable. See Hester Indus., Inc. v. Stein, Inc., 142 F.3d
1472, 1481 (Fed. Cir. 1998) ("an amendment to overcome a prior art
rejection evidences an admission that the claim was not patentable"); cf
Honeywell Int'! Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1141
(Fed. Cir. 2004) ("A presumption of surrender [for purposes of the doctrine
of equivalents] therefore arises if rewriting the dependent claims into
independent form, along with canceling the original independent claims,
constitutes a narrowing amendment.")
Appellant contends that Ex parte Yamaguchi, 61USPQ2d1043
(BP AI 2001) (precedential), supports its argument that subject matter was
not surrendered. App. Br. 8-10; Reply Br. 3--4. As explained by the
Examiner, Yamaguchi is inapposite. Ans. 4--5. In Yamaguchi, the claims
were deemed allowable in the first Office Action, no amendments were
8
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
made, and the applicants made no arguments to overcome prior art.
Yamaguchi, 61 USPQ2d at 1046; see id. ("Appellants' only 'argument' was
their lack of response to the examiner's statement of reasons for allowance,
and we know of no decision which holds that, under the recapture rule, a
surrender may result from an applicant's failure to act, as opposed to taking
a positive action such as changing the claims or presenting an argument.")
Unlike in Yamaguchi, Appellant here took positive action during prosecution
that resulted in surrender. The Examiner correctly determined that the
broader aspects of the reissue claims pertain to surrendered subject matter.
Regarding the third step of the analysis, Appellant argues that the
reissue claims are narrower in scope than the original claims. Reply Br. 2.
Appellant argues that "[Reissue] Claim 8 recites additional elements, such as
a pressure tube, a first valve assembly, and a compression device, which are
not recited in original Claim 1." Id. Notably, Appellant does not argue that
these additional features pertain to surrendered subject matter and does not
dispute the Examiner's determination that, "[ w ]hile the claims have been
narrowed by reciting features of the first disc/interface arrangement, these
features do not relate to the connection features of the spring recited by
patent application claim 5, rather they appear to be a different valve device
of the shock absorber." Final Act. 5. The Examiner is correct. The
surrendered subject matter pertains to the spring associated with a bleed
plate, and the Specification explains that a bleed plate (e.g., element 55 in
Fig. 2) is preloaded via a spring (56) and isolates bleed passage (30").
The '029 patent, col. 4, 11. 32-37. The compression device of reissue
claim 8, on the other hand, comprises an interface disc, and the Specification
9
Appeal2016-001586
Application 11/879,727
Patent 7 ,070,029 B2
describes an interface disc ( 48}-the material of which may be spring
steel-providing a preloading seating force onto blow-off disc (44)
associated with blow-off passage (42). Id., col. 4, 11. 10-25. Thus, the
surrendered subject matter and the additional features pertain to two
different "valves." Cf id., col. 7, 11. 17-19 (referring to "valves" isolating
the bleed passages or the blow-off passages). As such, the additional
features in the reissue claims are irrelevant and do not serve to avoid
recapture of surrendered subject matter. In re Youman, 679 F.3d at 1347-
48. The spring-ends limitations added during prosecution have been
eliminated in their entirety and the rejected reissue claims do not avoid
recapture of surrendered subject matter.
We affirm the Examiner's rejection of claims 8-27 as being an
improper recapture of surrendered subject matter.
DECISION
The decision of the Examiner to reject claims 8-27 is affirmed.
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)(l )(iv).
AFFIRMED
10