Ex Parte Morrison et alDownload PDFPatent Trial and Appeal BoardJul 16, 201312827650 (P.T.A.B. Jul. 16, 2013) Copy Citation 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 ____________ 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 2 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 3 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”). Appeal 2012-012266 Application 12/827,650 4 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. Appeal 2012-012266 Application 12/827,650 5 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? Appeal 2012-012266 Application 12/827,650 6 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. Appeal 2012-012266 Application 12/827,650 7 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, Appeal 2012-012266 Application 12/827,650 8 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. Appeal 2012-012266 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; Appeal 2012-012266 Application 12/827,650 10 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 Copy with citationCopy as parenthetical citation