Ex Parte Morrison et al

Patent Trial and Appeal Board

Jul 16, 2013

12827650 (P.T.A.B. Jul. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD BEVERLY MORRISON,
PETR VALENTINOVICH KUZMIN, and PAVEL TISHIN
____________

Appeal 2012-012266
Application 12/827,650
Patent 7,157,914 B2
Technology Center 2800
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Before MAHSHID D. SAADAT, DENISE M. POTHIER,
and JEFFREY S. SMITH, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
1

Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 28-36 as lacking an error correctable by reissue. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1
An Oral Hearing for this appeal was held on February 4, 2013.
Appeal 2012-012266
Application 12/827,650

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STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to a Time Domain Electromagnetic
(TDEM) surveying method having improved sensor resolution. (See Spec.
col. 3, ll. 25-26).
Exemplary Claim
28. A method for providing a tow assembly for an
electromagnetic airborne survey system at an assembly
location, comprising:
providing a plurality of hollow transmitter support frame
sections;
providing a transmitter coil for generating a primary
magnetic field;
providing connector cables and a tow cable; and
assembling the transmitter support frame sections and the
transmitter coil and the cables to provide a tow assembly
having a flexible hollow transmitter support frame that is
circular or approximates a circle having the transmitter coil
disposed within the hollow transmitter support frame and
formed from serially connecting the transmitter support frame
sections, with the connector cables each having a first end
connected to a respective location on a circumference of the
transmitter support flame and a second end connected to a first
end of die tow cable.

The Rejection
Claims 28-36 stand rejected under 35 U.S.C. § 251 for lack of defect
or error in the original patent and as not being an error correctable by
reissue. (See Ans. 5-6).

Appeal 2012-012266
Application 12/827,650

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FINDINGS OF FACT
Prosecution History
1. Appellants filed U.S. Application No. 10/716,813 (“813
Application”) on Nov. 20, 2003.
2. On May 8, 2006, the Examiner required restriction to three
patentably distinct groups of claims as follows:
I. Claims 1, 3-10, 12, 13, 15-28, 32, and 33, drawn to a
method and apparatus using a tow assembly, the assembly comprising
a flexible frame, the receiver flexibly connected to a receiver support
frame and a dual mode gain amplifier, classified in class 324, subclass
330.
II. Claim 29, drawn to a computer program comprising a
computer readable medium and instructions to operate a general
electromagnetic antenna assembly, classified in class 702, subclass 5.
III. Claims 30, 31, 34, and 35, drawn to trailing airborne
surveying systems having specific antenna structures, classified in
class 343, subclass 707.
3. On August 18, 2006, Appellants filed a response to the
Examiner’s Restriction Requirement and elected to prosecute the claims of
group I. Appellants did indicate that “[t]his election/restriction is made by
the Applicant without prejudice to the right to file one or more divisional
applications comprising the subject matter of species (II) or (III).” However,
no such divisional application was filed.
4. On January 2, 2007, Application 10/716,813 issued as U.S.
Patent 7,157,914 (“914 Patent”) including claims 1, 3-10, 12, 13, 15-28, 32,
and 33 (renumbered as claims 1-27).
5. On December 23, 2008, Appellants filed reissue U.S.
Application No. 12/343,321 (“Reissue Application”).
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6. In U.S. Application No. 12/343,321, claims 1-27 were claims 1,
3-10, 12, 13, 15-28, 32, and 33 of 813 Application and newly added claims
28-33 were directed to a method for providing a tow assembly.
7. On December 10, 2009, the Examiner required restriction to
one of the following two inventions:
I. Claims 1-27, drawn to a method and apparatus for
airborne electromagnetic surveying and circuitry therefor, classified in
class 324, subclass 330.
II. Claim 28-33, drawn to an antenna for a tow assembly,
classified in class 343, subclass 707.
8. On March 10, 2010, Appellants filed a response to the
Examiner’s Restriction Requirement and elected to prosecute the claims of
group I.
9. On June 30, 2010, Appellants filed (as a divisional of
Application 12/343,321) reissue U.S. Application No. 12/827,650 containing
claims 28-36 alleging error as follows:
in overlooking embodiments of my invention which pertain to a
method for providing a tow assembly for an electromagnetic airborne
survey system at an assembly location, comprising: providing a
plurality of transmitter support frame sections, a transmitter coil for
generating a primary magnetic field, connector cables and a tow cable
and assembling the transmitter support frame sections and the
transmitter coil and the cables to provide a tow assembly having a
transmitter support frame that is circular or approximates a circle
bearing the transmitter coil and formed from serially connecting the
transmitter support flame sections, with the connector cables each
having a first end connected to a respective location on a
circumference of the transmitter support frame and a second end
connected to a first end of the tow cable.
10. On August 24, 2011, the Examiner finally rejected claims 28-36
under 35 U.S.C. § 251 as being improper for reissue.
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11. On February 23, 2012, Appellants filed an appeal of the
Examiner’s final rejection.
The Examiner’s Rejection
12. The Examiner found that a restriction requirement had been
made during prosecution of application for the 914 Patent between Groups I,
II, and III, where Appellants elected without traverse to prosecute the
invention of claims Group I including claims 1, 3-10, 12, 13, 15-28, 32, and
33 of the 813 Application and “never filed any divisional applications
covering such non-elected species” (Ans. 5).
13. The Examiner found further that
The claims of the present divisional reissue application
read on or are broader versions of the claims in Group III
(claims 30, 31, 34 and 35) of the ‘813 application and thus
cover the primary features of the Group, i.e., the specific
features of the antenna structures of the towed assembly.
Alternatively, if these divisional reissue claims were presented
in the '813 application during prosecution thereof, they would
also have been subject to the same restriction by either being
placed in Group III or in a separate group for similar reasons
for restriction from Group I. Thus, the present claims should
have been presented in a divisional application to the parent
application.
(Ans. 5-6) (Emphasis added).
14. The Examiner concluded that “failure of Applicants to file a
divisional application during the pendency of the ‘813 application (which
later issued to the ‘914 patent) does not amount to an error correctable by
reissue” (Ans. 6).
Issues on Appeal
1. Is the failure to present claims 28-36 during the prosecution of
the 914 Patent an error that can be corrected by reissue?
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2. Are appealed claims 28-36 of reissue U.S. Application No.
12/827,650 substantially identical to claims of the non-elected groups
identified in the Examiner’s restriction requirement during the prosecution
of the 914 Patent?

PRINCIPLES OF LAW
The section of the patent statute providing for correction of errors in a
patent by reissue of the patent reads, in relevant part:
Whenever any patent is, through error, deemed wholly or partly
inoperative or invalid . . . 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.
35 U.S.C. § 251, first paragraph.
"[T]he whole purpose of the [reissue] statute, so far as claims are
concerned, is to permit limitations to be added to claims that are too broad or
to be taken from claims that are too narrow.” In re Weiler, 790 F.2d 1576,
1580 (Fed. Cir. 1986) (quoting In re Handel, 312 F.2d 943,948 (CCPA
1963)).
The “Orita doctrine” precludes applicants from obtaining by reissue
claims which, because of a requirement for restriction in which they had
acquiesced, they could not claim in their patent. In re Orita, 550 F.2d 1277,
1280 (CCPA 1977).
When applicants acquiesce in the Examiner’s requirement for
restriction, such action manifestly is not “error” causing patentee to claim
“less than he had a right to claim in the patent” in the language of 35 U.S.C.
§ 251. Id. 550 F.2d at 1280.
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The so-called Orita doctrine precludes reissue applicants from
obtaining substantially identical claims to those of non-elected groups
identified in an Examiner's restriction requirement when such claims could
not have been prosecuted in the application from which they were restricted.
In re Doyle, 293 F.3d 1355, 1359 (Fed. Cir. 2002).

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
conclusions. We agree with the Examiner that with respect to claims 28-36
on appeal, the patent resulting from the prosecution of the 813 Application
was error-free.
Appellants argue that the Examiner erred in failing to recognize that
the present claims “to the ‘method for providing a tow assembly,’ which
were never part of the subject matter claimed during the prosecution of the
original ‘914 patent . . . [and] were never held to be patentably distinct
during the prosecution of the ‘813 application” (App. Br. 5). Appellants
conclude that, contrary to the decision in Weiler, 790 F.2d at 1579, failure to
file a divisional application to the non-elected Groups in the original ‘813
application has no bearing on the present reissue claims which were “not
‘non-elected’ in that application” (id.).
According to Appellants (App. Br. 11), “in the instant reissue
application, claims to an overlooked invention were never filed in the
original application,” and therefore, relate to a situation different from that
of Orita, 550, F.2d at 1280 (the failure to file a timely divisional application
to non-elected subject matter is not error correctable by reissue). Moreover,
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Appellants argue that “Orita does not address the situation in which an
invention that was fully disclosed in an original application for patent . . .
was overlooked by the applicant through error without deceptive intent”
(Reply Br. 11).
We disagree. The critical issue is the relation of the subject matter of
newly presented claims 28-36 to the subject matter covered by Groups I - III
of the restriction requirement of the 813 Application. Contrary to
Appellants’ arguments that appealed claims 28-36 “could never be a part of
any restriction requirement promulgated in that original application, because
there were no claims to that invention” (id.), appealed claims 28-36 are
substantially identical claims to those of nonelected Group III (claims 30,
31, 34, and 35) identified in the Examiner’s restriction requirement of the
813 Application. As stated above, the reissue claims asserted in In re Orita
did not just read on nonelected subject matter, but rather were “substantially
identical to those non-elected in [the] application.” Orita, 550 F.2d at 1280.
Therefore, presently appealed claims 28-36 could not have been prosecuted
in the 813 Application from which their invention (Group III, including
claims 30, 31, 34, and 35) was restricted.
In the following table, we compare the subject matter of claim 28 of
the present reissue Application to the subject matter of claim 34 of the 813
Application, grouped in the non-elected Group III. We note the nominal
recitation of “a method for providing” followed by steps of “providing” and
“assembling” in claim 28 of the present application, but see no substantial
difference with respect to the scope and the structural features between the
claims.

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Application 12/827,650

9
Reissue Application No.
12/827,650 Claim 28

Application No. 10/716,813
Non-Elected Claim 34

1 A method for providing a tow
assembly for an
electromagnetic airborne
survey system at an assembly
location, comprising:
A tow assembly apparatus
for airborne time domain
electromagnetic surveying
comprising:
. . .
the transmitter section can be
assembled and disassembled
. . .
2 providing a plurality of hollow
transmitter support frame
sections;
. . .
to provide a tow assembly
having a flexible hollow
transmitter support frame . . .
(a) A flexible support frame
including:
(i) A transmitter section
having a central axis and
consisting of a plurality of
interconnectable transmitter
section frame members, such
that the transmitter section
can be assembled and
disassembled, and the
transmitter section frame
members define a polygonal
profile; and
3 providing a transmitter coil
for generating a primary
magnetic field;
Wherein the transmitter
section houses an elastically
suspended transmitter coil
4 providing connector cables
and a tow cable;
Wherein the transmitter
section and the receiver
section arc connected by
means of a plurality of
connecting cables
5 with the connector cables
each having a first end
connected to a respective
location on a circumference of
the transmitter support frame
and a second end connected to
a first end of the tow cable.
Wherein the tow assembly
apparatus is connected to the
aircraft by means of at least
one cable means connected
to the transmitter section at a
plurality of points;
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Application 12/827,650

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A comparison of the subject matter of method claim 28 of the present
reissue Application 12/827,650 to the subject matter of apparatus claim 34
of the 813 Application leads us to a similar invention in that there is no
substantial difference between the claims even though they are directed to
different statutory categories. In this case, these claims are simply not
patentably distinct. Under Orita, of course, there is no correctable error in
failing to prosecute divisional applications on inventions of the non-elected
groups identified by the Examiner in the original restriction requirement.
We also disagree with Appellants that failure to file a divisional
application to the non-elected Groups in the original 813 Application has no
bearing on the present reissue claims which were “not ‘non-elected’ in that
application” (App. Br. 5). That is, had they been presented in the original
application, appealed claims 28-36 would also have been subjected to the
same restriction by either being placed in Group III or in a separate group
for similar reasons for restriction from Group I. Consistent with the decision
in Weiler, 790 F.2d at 1579, even if the present reissue claims were “not
‘non-elected’” in the 813 Application, we agree with the Examiner that
failing to file divisional applications on the subject matter to which the
claims had never been presented, similar to failing to file divisional
applications on subject matter to which claims had been made in the original
application would not have been “error” as set forth in § 251 (see Ans. 10).
We conclude that as a matter of law, the “Orita doctrine” precludes
Appellants from obtaining by reissue the claims on appeal.

Appeal 2012-012266
Application 12/827,650

11
CONCLUSION
The Examiner did not err in rejecting claims 28-36 as being improper
for reissue.
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

ELD