Ex Parte Holmes

Patent Trial and Appeal Board

Jul 28, 2016

14279953 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/279,953 05/16/2014 Kevin C. Holmes
44639 7590 08/01/2016
CANTOR COLBURN LLP- BAKER HUGHES INCORPORATED
20 Church Street
22nd Floor
Hartford, CT 06103
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.
PRF4-46542-US-REI 8607
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN C. HOLMES
Appeal2016-003693 1
Application 14/279,953
Technology Center 3900
Before ALLEN R. MACDONALD, KEN B. BARRETT, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The above-identified application on appeal ("Reissue Application")
seeks a reissue of US Patent 8,413,727 B2 ("Issued Patent"), which issued
from US Patent Application 12/469, 108 ("Original Application"). 2 The
Appellant appeals from the Examiner's rejections of claims 1-32, 41-51,
63-79, and 82-88. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, "[t]he real party in interest in this Appeal is
BAKER HUGHES INCORPORATED." (Appeal Br. 1.)
2 The filing date of the Reissue Application (May 16, 2014) is within two
years of the grant date of the Issued Patent (April 9, 2013) and falls within
the two-year window required to enlarge the scope of the claims of the
Issued Patent. See 35 U.S.C. § 25l(d).
Appeal2016-003693
Application 14/279,953
STATEMENT OF THE CASE
The independent claims on appeal (i.e., claims 1, 21, 24, 25, 41, 63,
74, 76, 78, 82, 85, and 88) are directed to "[a] dissolvable downhole tool,"
"[a] method of dissolving a downhole tool," and "[a] method of making a
dissolvable downhole tool." (Appeal Br., Claims App.) Independent
claims 1, 25, and 74, quoted below (with some re-paragraphing), are
exemplary of the claimed subject matter.
1. A dissolvable downhole tool, comprising a dissolvable
body comprising a plurality of encased particles sintered
together, the plurality of encased particles being constructed of
at least two materials with at least one of the at least two materials
being a reactive material, a first material of the at least two
materials being configured to substantially dissolve the
dissolvable body downhole and a second material configured to
control reaction timing of the first material, the first material and
the second material being selected to promote oxidation or
reduction reactions when they react the first material being
encased in the second material and the second material being
encased in a third material before being sintered.
25. A dissolvable downhole tool, comprising a dissolvable
body including a plurality of encased particles sintered together,
the plurality of encased particles being constructed of at least two
materials, a first material of the at least two materials being
configured to substantially dissolve the dissolvable body
downhole and a second material configured to control reaction
timing of the first material, the first material being a reactive
material and the second material being a non-reactive material,
the second material being selected to promote one of an oxidation
reaction and a reduction reaction of the first material when the
first material is encased in the second material.
74. A dissolvable downhole tool, comprising a core of the
dissolvable downhole tool with a first reactive material; and a
coating disposed about the core with a second reactive material,
the second reactive material being significantly more reactive
than the first reactive material.
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REJECTIONS
I. The Examiner rejects claims 25-32, 41-51, 63-79, and 82-88
under 35 U.S.C. § 251 as a recapture of surrendered subject matter. (Non-
Final Action 5.)
II. The Examiner rejects claims 1-32, 41-51, 63-79, and 82-88
under 35 U.S.C. § 251 as based on a defective reissue declaration. (Id. at 6.)
III. The Examiner rejects claims 25-32, 41-51, and 63-73 under
35 U.S.C. § 112, first paragraph, as non-enabled. (Id. at 2.)
IV. The Examiner rejects claims 25-32, 41-51, and 63-73 under
35 U.S.C. § 112, second paragraph, as indefinite. (Id. at 4.)
V. The Examiner rejects claims 25-32, 41-51, 63-73, 76-79, and
82-87 under 35 U.S.C. § 102(b) as anticipated by Marya (Marya et al.
US 2007/0181224 Al published August 9, 2007). (Id. at 7.)
VI. The Examiner rejects claims 74, 75, and 88 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Id. at 3.)
ANALYSIS
The "Issued Claims" and the "Reissue Claims" are directed to a
dissolvable downhole tool, a method of dissolving a downhole tool, and a
method of making a dissolvable downhole tool. (Issued Patent, Claims;
Appeal Br., Claims App.)3 The claimed tools comprise, and the claimed
methods involve, a "first" material that can be "dissolvable" and/or
3 We refer to claims 1-24 in the Issued Patent and to verbatim claims 1-24 in
the Reissue Application as the "Issued Claims," and we refer to claims 25-32,
41-51, 63-79, and 82-88 in the Reissue Application as the "Reissue Claims."
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"reactive," and a "second" material that can be either "non-reactive" or
"reactive." (Id.)
Re} ection I - Recapture
"[T]he 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, the determination is made "whether and in
what aspect the reissue claims are broader than the patent claims." Id.
Under the second step, the determination is made "whether the broader
aspects of the reissue claims relate to surrendered subject matter." Id. If the
reissue claims are broader relative to the patented claims in a manner related
to surrendered subject matter, then under the third step, the determination is
made "whether the surrendered subject matter has crept into the reissue
claim." Id. at 1344. 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. But "the recapture rule is violated when a limitation
added during prosecution is eliminated entirely, even if other nmTowing
limitations are added to the claim." Jn re J\1ostafa::adeh 643 F 3d. 1353,
1361 (Fed. Cir. 2011).
As indicated above, the Issued Claims and the Reissue Claims all
require a first material and a second material. (See Issued Patent, Claims;
Appeal Br., Claims App.) All of the Issued Claims also require a "third
material" (see Issued Patent, Claims); none of the Reissue Claims require a
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third material (See Appeal Br., Claims App.). It is not disputed that the
Reissue Claims enlarge the scope of the claims of the Issued Patent in that
they do not include the third-material limitation; and it not disputed that the
third-material limitation was added to gain allowance of the Original
Application. (See e.g., Appeal Br. 10.)
The Examiner determines that the Reissue Claims improperly
recapture surrendered subject matter. (See Non-Final Action 3--4.) In this
regard, the Examiner applies the Federal Circuit's three-step recapture test
(outlined above) and concludes that "the limitation added during prosecution
[i.e., the third-material limitation] is eliminated entirely therefore, violating
the recapture rule." (Answer 13-14).
The Appellant argues that the Reissue Claims "do not represent
improper recapture." (Appeal Br. 12.) The Appellant does not appear to
challenge the Examiner's application of the first two steps of the Federal
Circuit's three-step recapture test. Rather, the Appellant argues that the
Reissue Claims contain materially narrowing limitations that represent
overlooked and unclaimed aspects. (Id. at 10-11; Reply Br. 4.)
Specifically, the Appellant argues that features, in the Reissue Claims,
directed to the reactivity and structure of the second material are materially
narrowing limitations totally irrelevant to the third-material feature, which
was added for purposes of patentability during the prosecution of the
application. (Appeal Br. 9-11.) According to the Appellant,"§ 1412.02
(I)( C) of the MPEP describes an exception to the recapture doctrine allowing
for a limitation added for patentability to be removed in a reissue claim" and
"the present case represents just such an exception." (Id. at 9.)
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We are not persuaded by the Appellant's position because, here,
reliance upon MPEP § 1412.02(I)(C) is misplaced.4 "This portion of the
l\rlPEP deals with claims in which there is no need to apply the recapture 1ule
in the first place" and "addresses reissue claims directed at 'additional
inventions/embodhnent/species not originaHy claimed. rn Afostr~fazadeh 643
F.3d. at 1360 (emphasis omitted). "\Vhereas the recapture rule applies when
suffendered subject matter is being reclaimed, overlooked aspects by
definition were never claimed and thus never suffendered." Youm.an, 679
F.3d at 1347 (citing lVIostafazadeh, 643 F.3d at 1360). For the reasons set
forth below, we agree with the Exarniner's determination that the recapture
rule applies and that the additional second-material features of the Reissue
Claims do not avoid recapture of suITendered subject matter.
As indicated above, the Appellant does not appear to challenge the
Examiner's application of the first two steps of the Federal Circuit's three-
step recapture rule test. We agree with the Examiner's determinations
regarding those two steps (Non-Final Action 11-13). As for the first step,
there is no dispute that the Reissue Claims are broader than the Issued
Claims in that they do not require the third-material. As for the second step,
as acknowledged by the Appellant, "the third material [was] added to gain
allowance" of the Original Application (Appeal Br. l 0) and so the broader
aspect of the Reissue Claims relates to suffendered subject matter. In other
words, the Appellant surrendered subject matter lacking the third-material
limitation.
4 The Appellant appears to be referring to the Seventh Revision of the
MPEP, as was the Federal Circuit in Mostafazadeh. The MPEP was revised
after the Mostafazadeh and Youman decisions.
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As for the third step, as acknmvledged by the Appellant, the
narrowing limitations in the Reissue Claims are "totally in-elevant to the
limitation added for patentab1y" (Appeal Br. 9) and so the Reissue Clairns
have not been narrowed relative to the surrendered subject matter.
l\1ore concisely, a limitation added during prosecution to gain
allowance (i.e., the third material) is eliminated entirely in the Reissue
Claims and, even though other naiTmving limitations are added, the
recapture rule is violated. 5 "If [as here] 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." Youman, 679 F.3d at 1347--48.
Accordingly, we are not persuaded by Appellant's argument (App. Br. 9-10)
that the narrowing "replacement limitations," purportedly pertaining to
overlooked aspects, are materially narrowing.
Thus, in view of the foregoing, we affirm the Examiner's rejection of
claims 25-32, 41-51, 63-79, and 82-88 under 35 U.S.C. § 251 as
recapturing surrendered subject matter.
5 In any event, the Appellant does not really argue that the second-material
features of the Reissue Claims are unrelated to subject matter that was
surrendered during prosecution. Rather, the Appellant's arguments are
directed to why the Reissue Claims are allegedly unrelated to claims that
contain the third-material limitation, viz. the Issued Claims. For example,
the Appellant argues that the Reissue Claims "have removed the third
material recognizing that various previously unclaimed attributes of the
second material may control the rate of reaction of the first material without
the need for the third material and, as a result, represent an invention."
(Appeal Br. 10.) The Appellant also argues that, in the embodiments
encompassed by the Reissue Claims, the third material "becomes irrelevant"
or "superfluous." (Id.)
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Rejection II - Defective Declaration
The inventor's declaration in a reissue application must "specifically
identify at least one error pursuant to 35 U.S.C. § 251 being relied upon as
the basis for the reissue." 37 C.F.R. § 1.175. "[N]ot every event or
circumstance that might be labeled 'error' is con-ectable by reissue" and one
"such circumstance that does not satisfy the 'en-or' requirement is embodied
by the recapture nile." Youman 679 F.3d at 1343.
In the declaration of the Reissue Application ("Declaration"), the
identified error is "limiting the present invention to the inclusion of the third
material" whereby the inventor "claimed less than he had the right to claim."
(Declaration, 1.)
The Examiner determines that "error relies in recapture of surrendered
subject matter as described above" and so this error is not correctable by
reissue. (Non-Final Action 7.) The Appellant argues that the Reissue
Claims "do not represent improper recapture as outlined above" and so the
Declaration is proper. (Appeal Br. 12.) As discussed above, we agree with
the Examiner that the Reissue Claims violate the recapture rule, and we
therefore agree that the Declaration is defective.
Thus, we affirm the Examiner's rejection of claims 1-32, 41-51,
63-79, and 82-88 under 35 U.S.C. § 251 as based upon a defective reissue
dee larati on.
Rejection III-Non-enablement
The specification of a patent must teach those skilled in the art how to
make and use the fun scope of the claimed invention without "undue
experimentation.~' In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
"[T]he PTO bears an initial burden of setting forth a reasonable explanation
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as to why it believes that the scope of protection provided by that claim is
not adequately enabled by the description of the invention provided in the
specification of the application." Id. at 1561---62.
Independent claims 25, 41, and 63 (Reissue Claims) each require a
non-reactive second material to be "selected to promote one of an oxidation
reaction and a reduction reaction." (Appeal Br., Claims App.)
The Examiner determines independent claims 25, 41, and 63, and all
of the claims depending therefrom, are not enabled by the Specification. (See
Non-Final Action 3, 4.) According to the Examiner, "the known definition
of the term 'promote,' as it pertains to chemical reactions, is 'to act as a
promotor of (a catalyst)."' (Answer 10.) The Examiner's determination of
non-enablement is premised upon this definition and a finding that a non-
reactive material (i.e., the second material) "cannot act as a catalyst." (Id.,
11-12.)
The Appellant argues that the Examiner's definition of the claim term
"promote" is not correct and reliance upon this incorrect definition leads to
an erroneous conclusion concerning enablement. (See Reply Br. 2.)
We are persuaded by the Appellant's position because the Examiner's
implication that independent claims 25, 41, and 63 require the second
material to act as a "catalyst" is not aligned with extrinsic dictionary
evidence. The Examiner appears to equate a promoter and a catalyst, but
dictionary definitions distinguish the two. A dictionary definition for the
word "promotor," as it pertains to chemical reactions, is "any substance that
in small amounts is capable of increasing the activity of a catalyst. "6 A
6 http://www.dictionary.com/browse/promoter (last visited July 2016).
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dictionary definition for the word "catalyst," at it pertains to chemical
reactions, is "a substance that causes or accelerates a chemical reaction
without itself being affected."7 The Examiner finds that a non-reactive
second material cannot act as a "catalyst," but provides no finding that a
non-reactive second material cannot act as a "promoter" capable of
increasing the activity of a catalyst. As such, even if the claim term
"promote" is equated to the verb form of "promoter" as it pertains to
chemical reactions, the Examiner's findings are not attuned with his
explanation as to why the claims at issue in this rejection are not enabled by
the Specification.
Thus, in view of the foregoing, we reverse the Examiner's rejection of
independent claims 25, 41, and 63, and the claims depending therefrom,
under 35 U.S.C. § 112, first paragraph, as non-enabled.
Rejection IV -Indefiniteness
A claim fails to comply with 35 U.S.C. § 112, second paragraph,
"when it contains words or phrases whose meaning is unclear." In re
Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014). "[I]t is incumbent on
the examiner to establish that one of ordinary skill in the pertinent art, when
reading the claims in light of the supporting specification, would not have
been able to ascertain with a reasonable degree of precision and particularity
the particular area set out and circumscribed by the claims." Ex Parte Wu
10 USPQ2d 2031, 2033 (BPAI 1989).
As indicated above, independent claims 25, 41, and 63 (Reissue
Claims) each requires a non-reactive second material to be "selected to
7 http://www.dictionary.com/browse/catalyst (last visited July 2016).
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promote one of an oxidation reaction and a reduction reaction." (Appeal Br.,
Claims App.)
The Examiner determines that "[i]t is not clear how a material that is
non-reactive (i.e. the claimed second material), can promote one of an
oxidation reaction and a reduction reaction of the first material (i.e. the
reactive material)." (Non-Final Action 4.) The Examiner repeats the
"known definition" for the word "promoter" and the finding that "[a] non-
reactive material cannot act as a catalyst." (Answer 11-12.)
As with the non-enablement rejection discussed above, the Appellant
argues that the Examiner incorrectly interprets the claim term "promote" and
this incorrect interpretation leads to an erroneous decision regarding
indefiniteness. (See Reply Br. 3--4.)
We are persuaded by the Appellant's position because, as explained
above in our analysis of the non-enablement rejection, the Examiner's
implication-based on a "known definition" of the term "promote"-that
independent claims 25, 41, and 63 require the second material to act as a
"catalyst" is not aligned with the definitions of those terms as indicated by
extrinsic dictionary evidence. As the Examiner's determination is premised
upon an unsupported and/ or incorrect claim construction, the Examiner does
not establish that one of ordinary skill, when reading the claims in light of
the Specification, would consider the claims at issue unclear.
Thus, in view of the foregoing, we reverse the Examiner's rejection of
claims 25-32, 41-51, and 63-73 under 35 U.S.C. § 112, second paragraph,
as indefinite.
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Rejection V -Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). Unless this single reference "discloses within the four
comers of the document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited in the claim,
it cannot be said to prove prior invention of the thing claimed and, thus,
cannot anticipate under 35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008)
Independent claims 25, 41, 63, 76, 82, and 85 each recites a
"plurality" of "particles sintered together." (Appeal Br., Claims App.)
Independent claims 25, 41, and 63 also recite that the sintered-together
particles are "constructed of' the first material and the second material. (Id.)
Independent claims 76, 82, and 85 also recite that the sintered-together
particles have "cores" made of the first material and "a shell" made of the
second material. (Id.) Independent claims 25, 41, 63, 76, 82, and 85 each
further specify that the second material is a "non-reactive" material. (Id.)
Put more compendiously, independent claims 25, 41, 63, 76, 82, and 85 each
requires sintered-together particles that incorporate a non-reactive second
material.
The Examiner determines that Marya discloses sintered-together
particles including an inert (i.e., non-reactive) material. (See Non-Final
Action 8, 9, 10.) According to the Examiner, "the complete teachings" of
Marya "provide for" a dissolvable body including sintered-together particles
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that are constructed from two materials, "one of them being inert."
(Answer 18.)
The Appellant argues that Marya does not discloses the claimed
elements (i.e., sintered-together particles and an inert second material)
arranged in the way required by independent claims 25, 41, 63, 76, 82, and
85. (See Appeal Br. 12-13.) According to the Appellant, Marya provides a
disclosure of "a reactive substrate from sintered particles" and discrete
disclosures of an "inert material" that "does not meet the limitation of a
second material formed from particles sintered together." (Appeal Br. 13)
We are persuaded by the Appellant's position because the Examiner
does not sufficiently explain how Marya discloses, in an anticipatory
manner, sintered-together particles that incorporate a non-reactive second
material.
Marya discloses its degradable composition can have a morphology
including sintered end products of ultrafine powders of, for example,
magnesium and copper. (Marya, Fig. 5, i-fi-f 13, 57.) Thus, Marya does
indeed disclose sintered-together powders (i.e., particles). However, the
Examiner does not sufficiently explain why Marya discloses that, with this
particular morphology, the sintered-together powders can include a non-
reactive second material.
Marya also discloses that its degradable composition can have a
morphology wherein an inert material is embedded in a degradable metal
matrix. (See Marya, Fig. 6, i-fi-f 13, 58.) Marya further discloses that its
composition can be subsequently provided with a coating made of an inert
material. (See id., Fig. 7, i-fi-161---63, 72, 84.) Thus, Marya does indeed
disclose a second inert (i.e. non-reactive) material. However, the Examiner
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does not sutliciently explain why Marya discloses that such an inert material
can be somehow part of a plurality of particles sintered together.
Thus, in view of the foregoing, we reverse the Examiner's rejection of
independent claims 25, 41, 63, 76, and 82, and the claims depending
therefrom, under 35 U.S.C. § 102, as anticipated by Marya.
Rejection VI - Written Description
"The test fi..)r determining compliance with the vvTitten description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter." In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983). "The burden of showing that the claimed invention is not
described in the application rests on the PTO in the first instance." Jn re
Edwards, 568 F.2d 1349, 1354 (CCPA 1978). "[This] burden is discharged
by "presenting evidence or reasons why persons skilled in the art \vould not
recognize in the disclosure a description of the invention defined by the
claims.''' In re Alton, 76 F.3d 1168 5 1175 (Fed. Cir. 1996).
Independent claims 7 4 and 88 each recite that a second reactive
material is "significantly more reactive" than the first reactive material.
(Appeal Br., Claims App., emphasis added.)
The Examiner determines that the Original Application does not
convey possession of an embodiment wherein the second material is
significantly more reactive than the first material. (See Non-Final Action 4.)
According to the Examiner, the Original Application describes, in paragraph
15, that "the rate of reaction of the first material is insignificant in
comparison to the rate of reaction of the second material" in that "the time it
will take for a reaction with the more reactive first material is shorter than
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the time it takes for a reaction to occur with the second material that is less
reactive." (Answer 10-11.)8 In other words, according to the Examiner, the
Original Application describes, in paragraph 15, a relationship wherein the
first material is more reactive than the second material, not the claimed
relationship wherein the second material is more reactive than the first
material.
The Appellant argues that the Original Application describes, in
paragraph 15, the difference in reactivity "as being so significant that the rate
of reaction of the first material may be insignificant in comparison to the rate
of reaction of the second material." (Appeal Br. 7-8.) According to the
Appellant, "if the rate of reaction of the first material is insignificant, the
reactivity of the second material must be higher in comparison." (Reply
Br. 3.) In other words, according to the Appellant, the Original Application
described, in paragraph 15, the claimed relationship wherein the second
material is more reactive than the first material.
We are not persuaded by the Appellant's argument because we agree
with the Examiner that paragraph 15 in the Original Application describes a
relationship wherein the first material is more reactive than the second
material, not the now-claimed relationship wherein the second material is
more reactive than the first material. This paragraph begins by saying that
the first material is "the more reactive of the two materials" and there is "a
8 The paragraph contained in column 2, lines 51---67 of the Issued Patent
corresponds to paragraph 15 in the Original Application. We consider the
Examiner's citations to this passage in the Issued Patent (see e.g., Answer 10
as referring paragraph 15 in the Original Application. Likewise, we consider
the Appellant's citations to this passage in the Issued Patent (see e.g., Appeal
Br. 7-8) as referring to paragraph 15 in the Original Application.
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significant difference in the reactivity" between the first and second
materials. (Original Application i-f 15.) This paragraph also describes this
"significant difference" as corresponding to when "the rate of reaction of the
first material 18 may be insignificant in comparison to a rate of reaction of
the second reactive material." (Id.) Thus, the Examiner sufficiently presents
evidence and reasons as to why one of ordinary skill in the art would not
recognize from the Original Application, and particularly from paragraph 15,
that the inventor contemplated a relationship wherein the second reactive
material is significantly more reactive than the first reactive material, not the
opposite relationship now being claimed.
As for the rest of the Original Application, the Appellant does not
point to, and we do not find, any description conveying that the claimed
relationship was also contemplated by the inventor.
Thus, in view of the foregoing, we affirm the Examiner's rejection of
claims 74, 75, and 88 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
DECISION
We affirm the Examiner's rejection of claims 25-32, 41-51, 63-79,
and 82-88 under 35 U.S.C. § 251 as a recapture of surrendered subject
matter.
We affirm the Examiner's rejection of claims 1-32, 41-51, 63-79,
and 82-88 under 35 U.S.C. § 251 as based on a defective reissue declaration.
We affirm the Examiner's rejection of claims 74, 75, and 88 under
35 U.S.C. § 112, first paragraph.
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We reverse the Examiner's rejections of claims 25-32, 41-51, and
63-73 under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner's rejection of claims 25-32, 41-51, 63-73,
76-79, and 82-87 under 35 U.S.C. § 102.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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