Ex Parte Liu

Board of Patent Appeals and Interferences

May 30, 2012

12727084 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/727,084 03/18/2010 Yen-Fu LIU 4946-002RIS 2512
22429 7590 05/31/2012
LOWE HAUPTMAN HAM & BERNER, LLP
1700 DIAGONAL ROAD
SUITE 300
ALEXANDRIA, VA 22314
EXAMINER
KERVEROS, DEMETRIOS C
ART UNIT PAPER NUMBER
2117
MAIL DATE DELIVERY MODE
05/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte YEN-FU LIU
____________________

Appeal 2012-007903
Application 12/727,084
1

Patent 7,346,816
Technology Center 2100
____________________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
JUSTIN T. ARBES, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL
2

1
Filed March 18, 2010, seeking to reissue U.S. Patent 7,346,816 issued
March 18, 2008, based on application 10/951,664, filed September 29, 2004.
2
The real party in interest is the inventor Yen-Fu Liu. (App. Br. 2).
Appeal 2012-007903
Application 12/727,084
Patent 7,346,816

2
I. STATEMENT OF CASE
1. Appellant appeals under 35 U.S.C. § 134(a) from a final
rejection of reissue claims 35-47. Claims 1-34 are not before us in this
appeal.
2. We have jurisdiction under 35 U.S.C. § 6(b).

3. Independent reissue claim 35 on appeal reads as follows:
Claim 35. A secure hash standard (SHS) hardware accelerator device,
comprising:
a Quad-Channel-Output Memory (QCOM) having a message block
input; and
a logic and computational unit having a multiple bit output address
pointer configured to be connected to a memory unit, and a data bit input
configured to receive a Kt parameter stored in the memory unit, the Kt
parameter corresponding to a hash computation sequence represented by the
address pointer;
wherein the SHS hardware accelerator device is configured to
generate a test pattern by hash computation; and
wherein the SHS hardware accelerator device is configured to
generate a signature by hash computation using the generated test pattern.
4. Independent reissue claim 46 on appeal reads as follows:
Claim 46. A secure hash standard (SHS) hardware accelerator device,
comprising:
a Quad-Channel-Output Memory (QCOM) having a message block
input; and
a logic and computational unit having a multiple bit output address
pointer configured to be connected to a memory unit, and a data bit input
configured to receive a Kt parameter stored in the memory unit, the Kt
parameter corresponding to a hash computation sequence represented by the
address pointer;
wherein the QCOM is configured to simultaneously supply four data
parameters, to the logic and computation unit; and
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wherein the SHS device is configured to generate a hash digest from a
message block M of m bits in exactly T clock cycles, and wherein the SHS
device is configured to use different Kt input values for every sequence up to
T-1, except for the last sequence T of the hash computations.
5. Independent reissue claim 47 on appeal reads as follows:
Claim 47. A secure hash standard (SHS) hardware accelerator device,
comprising:
a Quad-Channel-Output Memory (QCOM) having a message block
input; and
a logic and computational unit having a multiple bit output address
pointer configured to be connected to a memory unit, and a data bit input
configured to receive a Kt parameter stored in the memory unit, the Kt
parameter corresponding to a hash computation sequence represented by the
address pointer;
wherein the SHS hardware accelerator device is configured to
generate a signature by a hash computation of a test pattern.
6. The remaining dependent reissue claims on appeal read as
shown in the Claims Appendix of Appellant‟s Appeal Brief and are not
reproduced herein.
7. The Examiner rejected reissue claims 35-47 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.” (Answer 4-6).
8. With respect to the rejection of claims 35-47 under
35 U.S.C. § 251, based on recapture, the panel affirms the decision of the
Examiner.
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4
II. ISSUE
The sole issue before the Board is whether Appellant has established
that the Examiner erred in rejecting claims 35-47 under 35 U.S.C. § 251
based on recapture.

III. FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of the evidence.
A. The Invention of U.S. Patent 7,346,816
1. According to Appellant (U.S. Patent 7,346,816, col. 1, ll. 7-10):
The present invention relates to a method and a system
for testing a memory. More particularly, the present
invention relates to a method and a system for testing a
memory using a hash algorithm.
2. Additionally, according to Appellant (col. 1, ll. 31-34):
It is therefore an objective of the present invention to
provide a method for testing a memory, where the
method can significantly reduce the test time, the cost,
and the complexity of external test system.
3. According to Appellant (col. 1, ll. 49-52):
It is still another objective of the present invention to
provide a test system for testing a memory, where the test
system can be easily integrated into a chip containing the
memory.
4. The patent sought to be reissued is based on Application
10/951,664, filed September 29, 2004, which we refer to as the “original
application.”

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B. Prosecution history of the “original” application
5. On September 29, 2004, Appellant filed original application
10/951,664, containing claims 1-23 directed to a “method for testing a
memory” and claims 24-35 directed to a “test system for testing a memory.”
6. Original application system claims 24-30 read as follows:
Claim 24. A test system for testing a memory, the test system comprising:
means for generating a test pattern by a hash algorithm, the test
pattern being written into the memory; and
means for generating a signature by the hash algorithm using the test
pattern read from the memory;
wherein the signature is used for comparison to a reference signature
to determine whether any fault occurs during the write-read operation.
Claim 25. The test system of claim 24, wherein the test system is embedded
in a chip containing the memory.
Claim 26. The test system of claim 24, wherein the hash algorithm
comprises a SHA.
Claim 27. The test system of claim 26, wherein the hash algorithm is
selected from the group consisting of SHA-1, SHA-224, SHA-256,
SHA-384, and SHA-512.
Claim 28.The test system of claim 26, further comprising: a ROM for
storing a plurality of Kt parameters, the Kt parameters being used
when performing the hash algorithm, wherein the Kt parameters
are defined in FIPS PUB 180-2.
Claim 29. The test system of claim 24, wherein the hash algorithm
comprises a MD5 algorithm.
Claim 30. The test system of claim 24, further comprising a message block
buffer for storing a message block, the message block being taken
as an input to perform the hash algorithm.

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7. On December 27, 2006, the Examiner entered a Non-Final
Office Action (“the Non-Final Action”).
8. The Non-Final Action rejected claims 1-35 on various grounds.
9. The prior art relied upon by the Examiner in rejecting the
claims was:
Jacobson US 4,715,034 Dec. 22, 1987
Dover US 6,732,306 B2 May 4, 2004
Liu US 2006/0034453 A1 Feb. 16, 2006

10. The rejections in the Non-Final Action were as follows:
Claims 1, 24, and 25 were rejected under 35 U.S.C. § 102(e) as
being anticipated by Dover.
Claims 2-15 and 26-35 were rejected under 35 U.S.C. § 103(a)
as being unpatentable over Dover and Liu.
Claims 16 was rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dover and Jacobson.
Claims 17-23 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dover, Liu, and Jacobson.
Claims 31-34 were also rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
11. On March 23, 2007, Appellant filed a first Amendment (“the
First Amendment”) responding to the Examiner‟s Non-Final Action.
12. The First Amendment amended independent claims 1, 2, 4-24,
and 26-35, and cancelled claim 25.
13. After entry of the First Amendment, the application claims
were 1-24 and 26-35.
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14. Amended system claims 24 and 26-30 read as follows (matter
underlined added by the amendment, and matter in [[double brackets]] or
strikethrough deleted by the amendment):
Claim 24. (amended) An on-chip test system for testing a memory, the test
system comprising:
a memory;
an accelerated memory built-in self-test (AMBIST) device,
comprising:
means for generating a test pattern by a hash algorithm, the test
pattern being written into the memory; and
means for generating a signature by the hash algorithm using
the test pattern read from the memory;
wherein the signature is used for comparison to a reference signature
to determine whether any fault occurs during the write-read operation
of the memory.
Claim 26. (amended) The test on-chip system of claim 24, wherein the hash
algorithm comprises a SHA (Secure Hash Algorithm).
Claim 27. (amended) The test on-chip system of claim 26, wherein the
hash algorithm is selected from the group consisting of SHA-1, SHA-224,
SHA-256, SHA-384, and SHA-512.
Claim 28. (amended) The test on-chip system of claim 26, wherein
AMBIST) device further compris[[ing]]es:
a ROM for storing a plurality of Kt parameters, the Kt parameters
being used when performing the hash algorithm, wherein the Kt
parameters are defined in FIPS PUB 180-2 (Federal Information
Processing Standards Publication 180-2).
Claim 29. (amended) The test on-chip system of claim 24, wherein the hash
algorithm comprises a MD5 (Message-Digest 5) algorithm.
Claim 30. (amended) The test on-chip system of claim 24, wherein the
AMBIST) device further compris[[ing]]es a message block buffer for storing
a message block, the message block being taken as an input to perform the
hash algorithm.
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15. In the First Amendment, Appellant presented arguments with
respect to the patentability of amended claim 24.
16. Appellant‟s arguments (see below), in the First Amendment,
addressed the following newly added limitations of Appellant‟s amended
claim 24:
(1) An on-chip system, comprising:
(2) a memory;
(3) an accelerated memory built-in self-test (AMBIST)
device, comprising:
[two unamended “means for generating” hashing
devices as found in originally filed claim 24].
17. In the First Amendment at page 16, fourth full paragraph,
Appellant argued “Claims 24-35 are amended to claim an on-chip system
instead of a test system (see FIG. 1B).” This argument addressed limitation
(1) [see Finding of Fact 16] found in Appellant‟s amended claim 24.
18. In the First Amendment at page 19, first full paragraph, first
three lines, Appellant argued:
Further, as explicitly recited in claim 24, the claimed invention
is directed to an on-chip system comprising a memory 112 and
an AMBIST device 111 (also see FIG. 1B)[.]
This argument addressed limitations (1), (2), and (3) [see above Finding of
Fact 16] as found in Appellant‟s amended claim 24.
19. In the First Amendment at page 19, first full paragraph,
remainder of the paragraph, Appellant further argued:
[W]herein the AMBIST device 111 comprises means for
generating a test pattern by a hash algorithm, the test pattern
being written into the memory; and means for generating a
signature by the hash algorithm using the test pattern read from
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the memory. Apparently, the AMBIST device 111 performed
the hash operations twice with respect to one seed for
generating the signature. However, as shown in Dover's FIG. 4,
it is unclear at which component of Dover's flash memory 24
the hash operation is performed, and Dover's flash memory 24
only performs the hash operation once with respect to one data
word. Apparently, Dover does not disclose the AMBIST device
111 of the claimed invention. Moreover, Dover's write state
machine 28 is used to control the different components within
flash memory 24 needed to program, erase, and verify the array
20 (see column 5 lines 38-40), and is just a standard controller
in the memory, so that Dover's write state machine 28 is
different from the AMBIST device 111 of the claimed
invention. Therefore, Dover cannot anticipate the on-chip
system disclosed in claim 24 of the claimed invention.
This argument addresses hashing as performed by the two unamended
“means for generating” (hashing devices) as found in originally filed claim
24 (and retained in amended claim 24). This argument is directed to the
amendment only in that the two unamended “means for generating” are now
part of the AMBIST device.
20. On May 7, 2007, the Examiner entered a Final Office Action
(“the Final Action”).
21. The Final Action rejected claims 1-15, 24, and 26-35 on various
grounds.
22. The prior art relied upon by the Examiner in rejecting the
claims was again:
Jacobson US 4,715,034 Dec. 22, 1987
Dover US 6,732,306 B2 May 4, 2004
Liu US 2006/0034453 A1 Feb. 16, 2006

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23. The rejections in the Final Action were as follows:
Claims 1 and 24 were again rejected under 35 U.S.C. § 102(e)
as being anticipated by Dover.
Claims 2-15 and 26-35 were again rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dover and Liu.
24. Claims 16-23 were indicated as allowable.
25. On August 3, 2007, Appellant filed an After-Final Request for
Reconsideration (“the Request”) responding to the Examiner‟s Final Action.
26. In the Request, Appellant stated that “the reference does not
fairly teach or disclose each and every element of the rejected claims”
(Request 2) and again argued that the unamended “means for generating”
hashing devices as found in originally filed claim 24 render the claim
patentable.
27. On November 16, 2007, a Notice of Allowability was mailed
which stated that pending claims 1-14 and 26-35 were allowed.
28. The Notice of Allowability included reasons for allowance
which stated:
The rejection of Claims 1 and 24 under 35 U.S.C. 102(e) as
being anticipated by Dover et al. (US Patent 6,732,306) is hereby
withdrawn in view of Applicant‟s remarks.
The rejection of Claims 2-15, 26-35 under 35 U.S.C. 103(a) as
being unpatentable over Dover et al. (US Patent 6,732,306) in view
Liu (US 20060034453) is hereby withdrawn in view of Applicant‟s
remarks. Further, the Examiner agrees with Applicant‟s statement that
the Liu reference is not qualified as an applicable prior art, since Liu
is the same invention of the instant application.
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29. Amended claims 1-24 and 26-35 correspond to patent
claims 1-34, respectively of U.S. Patent 7,346,816 issued March 18, 2008.
Amended claims 24 and 26-30 correspond to patent claims 24-29.
30. U.S. Patent 7,346,816 claims 24-29 read as follows:
Patent Claim 24. An on-chip system, comprising:
a memory;
an accelerated memory built-in self-test (AMBIST) device,
comprising:
means for generating a test pattern by a hash algorithm, the test
pattern being written into the memory; and
means for generating a signature by the hash algorithm using
the test pattern read from the memory;
wherein the signature is used for comparison to a reference signature
to determine whether any fault occurs during the write-read operation
of the memory.
Claim 26. The on-chip system of claim 24, wherein the hash algorithm
comprises a SHA (Secure Hash Algorithm).
Claim 27. The on-chip system of claim 26, wherein the hash algorithm is
selected from the group consisting of SHA-1, SHA-224, SHA-256, SHA-
384, and SHA-512.
Claim 28. The on-chip system of claim 26, wherein AMBIST) device further
comprises:
a ROM for storing a plurality of Kt parameters, the Kt parameters
being used when performing the hash algorithm, wherein the Kt
parameters are defined in FIPS PUB 180-2 (Federal Information
Processing Standards Publication 180-2).
Claim 29. The on-chip system of claim 24, wherein the hash algorithm
comprises a MD5 (Message-Digest 5) algorithm.
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Claim 30. The on-chip system of claim 24, wherein the AMBIST) device
further comprises a message block buffer for storing a message block, the
message block being taken as an input to perform the hash algorithm.

C. Prosecution of reissue application
31. On March 18, 2010, Appellant filed reissue application
12/727,084, seeking to reissue U.S. Patent 7,346,816.
32. Appellant presented original patent claims 1-34 along with new
reissue application claims 35-46 for consideration.
33. On August 26, 2010, the Examiner rejected claims 35-45 and
indicated claims 1-34 and 46 as allowable.
34. On November 17, 2010, Appellant presented arguments and
also added new reissue application claim 47 for consideration.
35. On December 16, 2010, the Examiner finally rejected reissue
claims 35-47 indicating that the original Reissue Oath/Declaration was
defective.
36. On January 25, 2011, Appellant presented arguments and also
filed a Supplemental Reissue Oath/Declaration.
37. Appellant‟s January 25, 2011, Supplemental Reissue
Oath/Declaration states:
I consider U.S. Patent No. 7,346,816 to be partly
inoperative by reason of claiming less than I had a right to
claim. U.S. Patent No. 7,346,816 does not have enough claims
of varying scope. For example, new independent claim 35 is
broader than claim 24 because it lacks “a memory,” as recited
on line 2 of claim 24, into which, and from which a test pattern
is read. New independent claim 47 similarly lacks the
“memory” recited in claim 24 and is likewise broader than
claim 24. Claim 47 is further broadened in that claim 47 does
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not recite means for generating a test pattern by a hash
computation, as recited in claim 24. Accordingly, new
independent claims 35 and 47 are both broader than claim 24.
38. On May 6, 2011, the Examiner rejected claims reissue 35-47
“under 35 U.S.C. § 251 as being an improper recapture of broadened claim
subject matter surrendered in the application for the patent upon which the
present reissue is based.” (May 6, 2011, Non-final Rejection 4-5).
39. On August 7, 2011, Appellant presented arguments and also
amended reissue claims 35, 46, and 47 (the independent reissue claims).
40. Amended reissue claims 35, 46, and 47 are the independent
claim on appeal. A copy of these claims is found above at pages 2-3 in the
Statement of the Case.
41. On September 8, 2011, the Examiner finally rejected reissue
claims 35-47.
42. On September 23, 2011, the Appellant appealed to the Board of
Patent Appeals and Interferences (“the Board”) “from the last decision of the
examiner.” (Notice of Appeal 1).
43. On November 22, 2011, the Appellant filed an Appeal Brief
(“the Appeal Brief”).
44. On February 17, 2012, the Examiner issued an Examiner‟s
Answer (“the Answer”).
45. On April 16, 2012, the Appellant filed a Reply Brief (“the
Reply Brief”).
46. On May 1, 2012, the Appeal was docketed to the Board.
Reissue application claims 35-47 are before the Board in this appeal.
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IV. DISCUSSION – RECAPTURE REJECTION
UNDER 35 U.S.C. § 251

A. § 251 – Recapture Principles
(1)
The statute

The reissue statute expressly permits a patentee to correct an error,
thus permitting the patentee to obtain reissue claims broader than the
originally issued patent claims at any time within two (2) years from the date
the original patent issues. More particularly, 35 U.S.C. § 251, ¶¶ 1 and 4,
provide in pertinent part:
Whenever any patent is, through error without any deceptive
intention, deemed wholly or partly inoperative or invalid, by
reason of a defective specification or drawing, or 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, and in
accordance with a new and amended application, for the
unexpired part of the term of the original patent.

No reissued patent shall be granted enlarging the scope of the
claims of the original patent unless applied for within two years
from the grant of the original patent.

(2)
Recapture is not an error
within the meaning of 35 U.S.C. § 251

Whether reissue claims violate 35 U.S.C. § 251 is a question of law.
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d
1335, 1349 (Fed. Cir. 2005). What has become known as the “recapture
rule” prevents a patentee from regaining through a reissue patent subject
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matter that the patentee surrendered in an effort to obtain allowance of
claims in the patent sought to be reissued. In re Clement, 131 F.3d 1464,
1468 (Fed. Cir. 1997).
If a patentee attempts to “recapture” what the patentee previously
surrendered in order to obtain allowance of original patent claims, that
“deliberate withdrawal or amendment ... cannot be said to involve the
inadvertence or mistake contemplated by 35 U.S.C. § 251, and is not an
error of the kind which will justify the granting of a reissue patent which
includes the [subject] matter withdrawn.” Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992, 995 (Fed. Cir. 1993), quoting from Haliczer v. United States,
356 F.2d 541, 545 (Ct. Cl. 1966).
3
See also Hester Industries Inc. v. Stein,
Inc., 142 F.3d 1472, 1480 (Fed. Cir. 1998).

(3)
In re Clement

The Federal Circuit‟s opinion in Clement discusses a three-step test
for analyzing recapture.
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. The Federal
Circuit reasoned that a reissue application claim deleting a limitation or
element from a patent claim is broader as to that limitation‟s or element‟s
aspect. Clement, 131 F.3d at 1468.

3
Haliczer is binding precedent. See South Corp. v. United States, 690
F.2d 1368 (Fed. Cir. 1982) (in banc) (decisions of the former U.S. Court of
Customs and Patent Appeals and former U.S. Court of Claims decisions are
binding precedent).
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Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. Clement, 131
F.3d at 1468-69. To determine whether an applicant surrendered particular
subject matter, we look to the prosecution history for arguments and changes
to the claims made in an effort to overcome a prior art rejection. Clement,
131 F.3d at 1469 (citing Mentor, 998 F.2d at 995-96; and Ball Corp. v.
United States, 729 F.2d 1429, 1436 (Fed.Cir.1984)). In reviewing the
prosecution history, the Federal Circuit observed that “[d]eliberately
canceling or amending a claim in an effort to overcome a [prior art]
reference strongly suggests that the Applicant admits that the scope of the
claim before cancellation or amendment is unpatentable.” Clement, 131
F.3d at 1469.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination whether the surrendered subject matter
has crept into the reissue application claim. Id. The following principles
were articulated in Clement, 131 F.3d at 1469-70:
Substep (1): if the reissue claim is as broad as or broader
than the canceled or amended claim in all aspects, the recapture
rule bars the claim;

Substep (2): if it is narrower in all aspects, the recapture
rules does not apply, but other rejections are possible;

Substep (3): if the reissue claim is broader in some
aspects, but narrower in others, then:
(a) if the reissue claim is as broad as or broader
in an aspect germane to a prior art rejection, but narrower
in another aspect completely unrelated to the rejection,
the recapture rule bars the claim;
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(b) if the reissue claim is narrower in an aspect
germane to [a] prior art rejection, and broader in an
aspect unrelated to the rejection, the recapture rule does
not bar the claim, but other rejections are possible.

(4)
North American Container

In North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335 (Fed. Cir. 2005), the Federal Circuit had occasion to further
address Substep (3)(a) of Clement.
North American Container involved a reissue patent, which had been
held invalid by the U.S. District Court for the Northern District of Texas.
The district court based its invalidity holding on a violation of the recapture
rule. During prosecution of the underlying patent application, an examiner
rejected the claims over a combination of two prior art references:
Dechenne and Jakobsen. To overcome the rejection, North American
Container limited its application claims by specifying that a shape of “inner
walls” of a base of a container was “generally convex.” North American
Container convinced the Examiner that the shape of the base, as amended,
defined over “both the Dechenne patent, wherein the corresponding wall
portions 3 are slightly concave ... and the Jakobsen patent, wherein the entire
reentrant portion is clearly concave in its entirety.” North American
Container, 415 F.3d at 1340. After a patent issued containing the amended
claims, North American Container filed a reissue application seeking reissue
claims in which (1) the language “inner wall portions are generally convex”
was eliminated, but (2) the language “wherein the diameter of said re-entrant
portion is in the range of 5% to 30% of the overall diameter of said side
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wall” was added. Thus, the claim sought be reissued was broader in some
aspects and narrower in other aspects.
The Federal Circuit, applying the Clement three-step test, held that the
reissue claims were broader in scope than the originally-issued claims in that
they no longer require the “inner walls” to be “generally convex.” The
Federal Circuit further found that the broadened aspect (i.e., the broadened
limitation) “relate[d] to subject matter that was surrendered during
prosecution of the original-filed claims.” North American Container, 415
F.3d at 1350. The Federal Circuit observed “the reissue claims were not
narrowed with respect to the „inner wall‟ limitation, thus avoiding the
recapture rule.” The Federal Circuit stated:
[T]he recapture rule is applied on a limitation-by-limitation
basis, and ... [North American Container‟s] deletion of the
“generally convex” limitation clearly broadened the “inner
wall” limitation.

Id. Thus, the Federal Circuit in North American Container further refined
Substep (3)(a) of Clement: “broader in an aspect germane to a prior art
rejection” means broader with respect to a specific limitation (1) added to
overcome prior art in prosecution of the application which matured into the
patent sought to be reissued and (2) eliminated in the reissue application
claims.

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B. § 251 – Our Analysis of the Original Prosecution
The Examiner has rejected reissue claims 35-47 under 35 U.S.C.
§ 251 as being an improper recapture of broadened claim subject matter
surrendered in the application for the patent upon which the present reissue
is based. (FF 38 and 41). Our analysis agrees with that result.
Basically, during prosecution of the application which matured into
the patent now sought to be reissued (see above FF 5-30), the Examiner
rejected originally filed claims 1-35 over the prior art (FF 7-10). Of
originally filed claims 1-35, system claims 24-30 (FF 6) are the most
relevant to reissue claims 35-47 before this Board and we focus our analysis
thereon. In response to the Examiner‟s rejection, Appellant proceeded to
re-write original application claims 24 and 26-30, and to cancel claim 25
(see FF 11-19).
As set out in our Findings of Fact 14-16:
(1) When faced with a rejection in the original application, Appellant
made three significant amendments to claim 24 (See FF 6,
FF 14, and particularly FF16);
These three significant amendments consisted of:
(a) Deleting dependent claim 25 and incorporating its
“embedded in a chip” limitation into amended claim 24
as the limitation “on-chip”;
(b) Deleting the “for testing a memory” intended use
limitation from the preamble of claim 24 and adding a
positively recited “memory” structure limitation to
amended claim 24; and
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(c) Adding an “accelerated memory built-in self-test
(AMBIST) device” limitation to amended claim 24.
Additionally, as set out in Findings of Fact 17-19:
(2) When faced with a rejection in the original application, Appellant
also made three significant arguments with respect to the
significant amendments of part (1) directly above.
These three significant arguments consisted of:
(a) Arguing that “[c]laims 24-35 are amended to claim an
on-chip system instead of a test system (see FIG. 1B).”
(FF 17);
(b) Arguing that “[f]urther, as explicitly recited in claim 24,
the claimed invention is directed to an on-chip system
comprising a memory 112 and an AMBIST device
111[.]” (FF 18); and
(c) Arguing that the originally claimed hashing operations
now contained in the newly added AMBIST device of
claim 24 distinguish over the Dover reference (FF 19).

In response to Appellant‟s amendments and arguments, the Examiner
again rejected claims 1-15, 24, and 26-35. (FF20-24). In response to this
Examiner‟s rejection, Appellant proceeded to present further arguments.
(See FF 25-26). As set out in Finding of Fact 26, when still faced with a
rejection in the original application, Appellant made two additional
significant arguments with respect to the significant amendments of part (1)
directly above. These two additional significant arguments consisted of:
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(d) Arguing that “the reference does not fairly teach or
disclose each and every element of the rejected claims[.]”
(FF 26); and
(e) Arguing again that the unamended “means for
generating” hashing devices as found in originally filed
claim 24 render the claim patentable (FF 26).

In response to the Appellant‟s above amendments (1)(a)-(c) and
arguments (2)(a)-(e), the Examiner proceeded to allow amended claims 24
and 26-30. Amended application claims 24 and 26-30 ultimately issued as
patent claims 24-29.

C. § 251 – Our Three-Step Recapture Analysis
As discussed in section IV.A above, the “recapture rule” prevents a
patentee from regaining through a reissue patent subject matter that the
patentee surrendered in an effort to obtain allowance of claims in the patent
sought to be reissued. In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997).
Application of the recapture rule is a three step process. Clement, 131 F.3d
at 1468.
There is no dispute regarding the first step of the recapture analysis.
Both Appellant and Examiner agree that reissue claim 35 is broader than
patented claim 24. However, they agree only that “the broader aspect relates
to a memory that, while recited in patented claim 24, is absent from reissue
claim 35” (App. Br. 10-11). We find this first-step analysis to be
incomplete. Reissue claim 35 is also broader than patented claim 24 in that
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the “on-chip” limitation of patented claim 24 is also absent from reissue
claim 35.
As to the second step, the Examiner contends that “the „memory‟
feature recited in claim 24 was surrendered during the prosecution of the
original Application 10/951,664 by incorporating the memory in the main
body of the claim to make the claims allowable in the Amendment made on
3/23/2007.” (Ans. 6). The Appellant disagrees and argues at pages 11-13 of
the Appeal Brief:
1. “The Examiner erred in categorizing the memory feature as
surrendered subject matter because the amendments regarding the
memory element were not made in an effort to overcome a prior art
rejection, the memory being, at best, only tangentially related to
patentability.”
2. “[T]he memory is, at best, only tangentially related to
patentability because Dover et al. (US 6,732,306), applied by the
PTO to reject the original claim 24, discloses a flash memory 24
and therefore the presence of a memory cannot directly relate to
patentability.”
3. “[N]owhere in the 3/23/2007 amendment does Appellant
suggest that patentability of claim 24 is based on the presence of a
memory element. For example, in the remarks beginning on page
17 of the 3/23/2007 amendment, Appellant states: „As explicitly
recited in claim 1, the claimed invention is directed to a method for
testing a memory embedded in an on-chip system comprising an
accelerated memory built-in self-test (AMBIST) device . . .‟.”
4. “Appellant clearly argues that patentability is based on the
hashing feature and not on the memory.”
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5. “Therefore, because:

1) The applied references disclose a memory element memory
element; and
2) There are no arguments in the prosecution history indicating that
the memory element was included in an effort to overcome a prior
art rejection,

the memory element is only tangentially related to patentability.
Accordingly, there was no surrender of a memory element to gain
allowance of claim 24 and the Examiner‟s reliance on In re
Shahram Mostafazadeh is misplaced.”
We find correct the Examiner‟s position that the “memory” was surrendered
during original prosecution. Appellant‟s own argument (see argument 3
directly above) explicitly admits that during prosecution Appellant argued
“As explicitly recited in claim 1, the claimed invention is directed to a
method for testing a memory embedded in an on-chip system comprising an
accelerated memory built-in self-test (AMBIST) device” (emphasis added)
at page 17 of the 3/23/2007 amendment. Explicit argument during
prosecution is the opposite of “tangentially related to patentability” as
argued by Appellant (see arguments 1, 2, and 5(1) directly above). This
explicit argument during prosecution also contradicts Appellant‟s arguments
(see arguments 4 and 5(2) directly above) that there were no arguments
during prosecution that patentability was based on inclusion of the memory.
That the Appellant also argued “hashing” during prosecution (see argument
4 directly above) does not render Appellant‟s other arguments a nullity.
Separately, the significant prosecution amendment deleting the “for testing a
memory” intended use limitation from the preamble of claim 24 and adding
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a positively recited “memory” structure limitation to amended claim 24 is an
additional basis for finding surrender of the memory limitation.
Additionally, we conclude that the amendment adding to claim 24 the
limitation “on-chip” and Appellant‟s explicit prosecution arguments directed
to this amendment are each significant and constitute surrender of this
limitation. (See FF 16-18). We conclude that an objective observer viewing
the prosecution history would conclude that the purpose of Appellant‟s
prosecution amendment and arguments were to overcome prior art and
secure the patent. Kim v. ConAgra Foods, Inc., 465 F. 3d 1312, 1323 (Fed.
Cir. 2006).
We have concluded (1) that the reissue claims are broader than the
patent claims in that the “memory” and “on-chip” limitations have been
removed, and (2) that these two removed limitations each relate to
surrendered subject matter. We now turn to the final step of the recapture
rule. We conclude, and Appellant does not contend otherwise, that each of
these surrendered aspects has been fully removed from reissue claims 35-47
on appeal. Because Appellant surrendered a memory and on-chip and seeks
to fully reclaim each of these limitations in its reissue claims, Appellant
violates the rule against recapture as to each limitation.

V. NEW GROUND OF REJECTION
Although we agree with the Examiner‟s conclusion as to reissue
claims 35-47, our analysis differs in critical ways from that of the Examiner.
Therefore, we designate our analysis as a new ground of rejection.

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37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

VI. CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 35-47.
(2) Claims 35-47 are not patentable.

VII. DECISION
The Examiner‟s rejection of claims 35-47 under 35 U.S.C. § 251 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)(1)(iv).
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AFFIRMED
37 C.F.R. § 41.50(b)

ELD