Ex Parte Youman et alDownload PDFPatent Trial and Appeal BoardApr 4, 201309313532 (P.T.A.B. Apr. 4, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROGER YOUMAN and MARNEY MORRIS ____________ Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 Technology Center 2400 ____________ Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and JOHN A. JEFFERY, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Upon reconsideration in light of our reviewing court’s analysis and mandate, we reverse and enter a new ground of rejection under 37 C.F.R. § 41.50(b). Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 2 BACKGROUND This application returns to this panel after the U.S. Court of Appeals for the Federal Circuit vacated our earlier decision affirming the Examiner’s rejection of claims 24-27, 29-43, and 45-55 under 35 U.S.C. § 251 as improperly recapturing surrendered subject matter. In re Youman, 679 F.3d 1335, 1339 (Fed. Cir. 2012) (“Because the Board did not properly apply the recapture rule’s three-step analysis, we vacate and remand.”). Specifically, the court concluded that “[t]he Board did not properly conduct step three of the recapture rule analysis” because “[i]t failed to determine whether the applicants avoided the recapture rule bar on reissue by modifying their ‘cycling’ limitation to ‘changing’ in the reissue claim.” Id. at 1348. The court then remanded the case to us to “apply the recapture rule analysis, as articulated in [Youman] and in [In re] Mostafazadeh, [643 F.3d 1353 (Fed. Cir. 2011),] to the claims at issue and make necessary findings of fact.” Id. As to the first step of the three-step recapture rule analysis, the court stated: Under the first step, we “determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims.” Mostafazadeh, 643 F.3d at 1358 (quoting [In re] Clement, 131 F.3d [1464,] 1468 [(Fed. Cir. 1997)]); Pannu [v. Storz Instruments, Inc.], 258 F.3d [1366,] 1371 [(Fed. Cir. 2001)]. The parties do not contest that with regards to the selecting means, the Board correctly determined that the “changing” limitation in claim 24 (“the reissue claim”) is broader than the “cycling” limitation of patented claim 1 of the ‘766 patent (“the patented claim”). Appellants’ Br. 44; Appellee’s Br. 16-17. This conclusion is confirmed by dependent reissue claim 25, which limits reissue claim 24 by calling for “changing from a Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 3 first to second character comprising cycling through displayed alphanumeric characters.” J.A. 33. Youman, 679 F.3d at 1343. As to step two of the three-step analysis, the court stated: Having agreed with the parties that the reissue claim is broader than the patented claim, step two requires us to “determine whether the broader aspects of the reissue claims relate to surrendered subject matter.” Mostafazadeh, 643 F.3d at 1358 (quoting Clement, 131 F.3d at 1468-69); N. Am. Container[, Inc. v. Plastipak Packaging, Inc.], 415 F.3d [1335,] 1350 [(Fed. Cir. 2005)]. Both parties answer this inquiry in the affirmative. Appellants’ Br. 45-46; Appellee’s Br. 17. Youman, 679 F.3d at 1343. Further, as to step two, the court stated: “We agree with the Board that through their argument and amendment, the applicants’ surrendered subject matter was any selecting means that was broader than the cycling limitation of the patented claim.” Id. at 1344. As to step three of the three-step analysis, the court stated: If the reissue claims are broader relative to the patented claims in a manner related to the surrendered subject matter, we must “determine whether the surrendered subject matter has crept into the reissue claim.” Mostafazadeh, 643 F.3d at 1358 (citing Clement, 131 F.3d at 1469); see Hester [Indus., Inc. v. Stein, Inc.], 142 F.3d [1472,] 1482 [(Fed. Cir. 1998)]. Unless the claims are materially narrowed in a way that avoids substantial or whole recapture of the surrendered subject matter, the surrendered subject matter has crept into the reissue claims and they are barred under the recapture rule. Mostafazadeh, 643 F.3d at 1361. The Board failed in several respects to apply this third step of the recapture rule; thus, we must vacate and remand. Youman, 679 F.3d at 1344-45. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 4 In summary, “[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.” Youman, 679 F.3d at 1343 (citing Mostafazadeh, 643 F.3d at 1358). The recapture rule is applied as a three-step process to: (1) “determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims,” Mostafazadeh, 643 F.3d at 1358 (quoting Clement, 131 F.3d at 1468); (2) “determine whether the broader aspects of the reissue claims relate to surrendered subject matter,” id. (quoting Clement, 131 F.3d at 1468-69); and (3) determine whether the reissue claims’ broader aspect “materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured,” Youman, 679 F.3d at 1345 (citing Mostafazadeh, 643 F.3d at 1358, 1359, 1361). “Thus, if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347. “Properly applied, the material narrowing must relate to the surrendered subject matter to prevent the recapture rule from applying.” Id. (citing Mostafazadeh, 643 F.3d at 1359). Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 5 STATEMENT OF THE CASE Appellants seek to reissue U.S. Patent 5,629,733 pertaining to an electronic television program guide and using a wireless remote control (or set top box)1 to search program listings by title. See generally ‘733 Patent, Abstract; col. 31, l. 52 – col. 32, l. 16; Figs. 4, 38F. Claim 1 of the original application as filed (“original claim 1”) was as follows (with key limitations emphasized): 1. An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of program sources on a plurality of user-selectable television channels comprising: user control means for issuing control commands, including channel- control commands; data processing means for receiving said control commands and for generating video control commands; a video display generator adapted to receive video control commands from said data processing means for generating and displaying a plurality of television program titles on said television receiver, said plurality of television programs displayed alphabetically by title; and selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than or equal to one; said data processing means being responsive to said selection means and adapted to select said plurality of television program titles for display on said television receiver in response to said n characters. 1 The selection means of patented claim 1 is not limited to just a remote control since the up/down keys can be on a remote control or be part of a cable box or other hardware. Col. 11, ll. 53-55. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 6 Patent claim 1 and reissue claim 24 are illustrative with key limitations emphasized: 1. An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of program sources on a plurality of user-selectable television channels comprising: user control means for issuing control commands, including channel- control commands; data processing means for receiving said control commands and for generating video control commands; video display generator means adapted to receive video control commands from said data processing means for generating and displaying a visual display of a plurality of television program titles on said television receiver, said plurality of television program titles arranged alphabetically by title; and selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than one; said data processing means being responsive to said selection means and adapted to select said plurality of television program titles for display on said television receiver in response to said n characters; wherein said video display generator means displays said n characters and said selection means comprises means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters and means for assigning one of said alphanumeric characters to each of said n characters. 24. An electronic television programming guide for use in connection with a television receiver for displaying a plurality of television programs from a plurality of sources on a plurality of user-selectable television channels comprising: a wireless remote control, comprising nonalphanumeric keys, that generates control commands; a data processor that receives the control commands from the wireless remote control; and Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 7 a video display generator connected to the data processor that displays an alphabetically-arranged visual display of a plurality of television program titles on said television receiver, wherein a user may search for a title to be displayed by selecting n characters with the wireless remote control, where n is greater than one, wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys. THE REJECTION The Examiner rejected claims 24-27, 29-43, and 45-55 under 35 U.S.C. § 251 as improperly recapturing surrendered subject matter.2 Ans. 3-4.3 APPELLANTS’ CONTENTIONS Appellants argue that the reissue claims materially narrow the original claim because neither original claim 1 nor issued claims 1 and 12 recite the following additional narrowing elements now recited in reissue claim 24 and similarly recited in reissue claim 40 (emphases added): a wireless remote control, comprising nonalphanumeric keys, that generates control commands; . . . . . . wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed 2 Claims 1-23 have been indicated as containing allowable subject matter. App. Br. 2. 3 Throughout this opinion, we refer to (1) the Appeal Brief filed April 1, 2009 (“App. Br.”); (2) the Examiner’s Answer mailed June 23, 2009 (“Ans.”); and (3) the Reply Brief filed August 24, 2009 (“Reply Br.”). Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 8 alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys. App. Br. 14-16; Reply Br. 14-15. ISSUE Under § 251, has the Examiner erred in rejecting claims 24-27, 29-43, and 45-55 by finding that the claims improperly recapture surrendered subject matter? This issue turns on whether the claims are materially narrowed relative to the original claims. ANALYSIS Original Prosecution Appellants’ Application Serial No. 08/346,603 (“parent application”) as filed contained original claim 1 included the following limitation (emphases added): “selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than or equal to one.” We construe this claim clause as a means-plus-function clause drafted pursuant to 35 U.S.C. § 112, ¶ 6.4 4 Special rules of claim construction allow for claim limitations drafted in functional language and are set forth in 35 U.S.C. § 112, ¶ 6, which provides that: [a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 9 Appellants’ use of term “means” creates a rebuttable presumption that Appellants intend to invoke § 112, ¶ 6.5 We find that Appellants’ modifying the “means to select” by further reciting the term “selection” does not alone serve to overcome this presumption.6 We further construe Appellants’ “selection means” to cover the corresponding structure (and equivalents thereof) as described in the Specification to perform the specifically claimed function of “allowing said user to select a title for display . . . by selecting the first n characters of said title, where n is greater than or equal to one.” 35 U.S.C. § 112, ¶ 6 (emphases added). While § 112, ¶ 6, permits functional language to be used, § 112, ¶ 6, operates to restrict claim limitation to those structures, materials, or acts disclosed in the specification (or their equivalents) that perform the claimed function. Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696, 703 (Fed. Cir. 1998). 5 The Federal Circuit has established that use of the term “means” is central to the analysis of whether a claim limitation should be interpreted in accordance with 35 U.S.C. § 112, ¶ 6: use of the word “means” creates a rebuttable presumption that the inventor intended to invoke § 112, ¶ 6, whereas failure to use the word “means” creates a rebuttable presumption that the inventor did not intend the claims to be governed by § 112, ¶ 6. Id.; Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d 1367 (Fed. Cir. 2012). 6 Claim language that further defines a term that otherwise would be a nonce word can denote sufficient structure to avoid a § 112, ¶ 6, construction, Mass. Inst. of Tech. & Elecs. for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006), as can a claim limitation that contains a term that “is used in common parlance or by persons of skill in the pertinent art to designate structure,” Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1359 (Fed. Cir. 2004). Nor will claim language invoke a § 112, ¶ 6, construction if persons of ordinary skill in the art reading the specification understand the term to be the name for a structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function. Greenberg v. Ethicon Endo- Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“Many devices take their names from the functions they perform.”). Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 10 Appellants’ Specification discusses a user interface which is operable in two modes, the scroll and search mode, in which there are character boxes which control the listing of titles. Col. 31, ll. 34-50; see also Figs. 38D-38F. Appellants’ Specification further describes that the user interacts with this interface in search mode by entering characters in the character boxes. The entry of characters is described as follows:7 Characters are input using the up/down arrow keys 43A and the ENTER or “OK” key 44. By depressing the up/down keys, the characters in the character boxes cycle through the letters of the alphabet and the digits 0-9. The arrows displayed around the perimeter of a character box designate the box currently activated and the keys which may be depressed. Once the desired character is selected, depressing the right arrow key moves the cursor to the second character box and so forth. Col. 31, ll. 59-67 (emphases added).8 Appellants’ Specification further describes the selecting operation of this corresponding structure stating “as characters are changed in the character boxes.” Col. 32, ll. 6-7 (emphasis added). We construe the “selection means” of Appellants’ originally filed claim 1 to cover both the user interface as depicted in Figures 38D and 38F with the character boxes and its interaction with up or down keys (i.e., non- alphanumeric keys) and equivalents thereof which are used as input to 7 Appellants describe this as the “search mode” of operation, as opposed to Appellants’ “scroll mode” which does not select n characters of the title as required by the selection means. 8 We note that this particular passage is also the supporting structure for the patent claim 1 limitation of “means for causing each of said n characters to cycle forward and backward,” and that implicit in this cycling is that the selected character is dependent upon where in the sequence the current character is (i.e. its state) to determine the next character displayed. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 11 implement the occurrence of a character change from a first character to a second character (a “cycle” being a series of such occurrences)9 where the characters are the letters of the alphabet and the digits 0-9. In response to a rejection of originally-filed claim 1, Appellants amended original claim 1 and added claims 2-23.10 Specifically, Appellants added the following language to claim 1: “said selection means comprises means for causing said character displays to cycle forward and backward through a plurality of alphanumeric characters and means for assigning one of said alphanumeric characters.” Parent Appl’n Amd’t A filed Mar. 11, 1996, at 2-8 (emphasis added). As the court indicates, Appellants argued in connection with this amendment “that they overcame the prior art by using the keys on the television control device to select the characters, by, for example, cycling through the alphabet, rather than entering each character using a keyboard, as taught in [the prior art].” Youman, 679 F.3d at 1340. After a supplemental amendment, the Examiner allowed the parent application “concluding that the means of selecting characters by cycling 9 See THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE SECOND EDITION UNABRIDGED 497 (1987). 10 Our reviewing court stated: The applicants amended the original claim, which provided for “selecting means,” to require “cycling” to select characters. This amendment was targeted at overcoming prior art– specifically, the Reed, Vogel, and Young patents. In the remarks accompanying this amendment, the applicants argued that the key distinction in the amended claim that overcame prior art was the use of “cycling” to “input 36 different characters (A-Z and 0-9) using only a few keys on the remote control device.” J.A. 974-75. Youman, 679 F.3d at 1344. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 12 forward, backward, up and down through a list of alphanumeric characters was not obvious in light of the prior art.” Id. (emphasis added). We find that Appellants’ amendment to original claim 1 limited the selection means to explicitly require character changes through “a plurality of alphanumeric characters” (i.e., “cycle”) and that the changes are in two directions (i.e., “forward and backward”). Reissue Prosecution During prosecution of the present broadening reissue application, Appellants amended reissue claim 24 by adding that the wireless remote control comprises nonalphanumeric keys and characters are selected by changing characters using those keys. Reissue claim 24 recites, in pertinent part: wherein a user may search for a title to be displayed by selecting n characters with the wireless remote control, where n is greater than one, wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys. Reissue Appl’n Amd’t filed Nov. 16, 2007, at 8 (emphasis added). Accord Youman, 679 F.3d at 1341 (noting this amendment). The Examiner later rejected claims 24-44 as improperly recapturing surrendered subject matter since these claims are said to lack the critical “cycling” limitation that was added to claim 1 during prosecution of the original patent to overcome the prior art rejection and render the claim allowable. Ans. 3-7. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 13 Although Appellants’ reissue claim 24 is not in means-plus-function format, it nonetheless positively recites a wireless remote control that is part of the corresponding structure to the “selection means” in originally filed claim 1. Therefore, by reciting that characters are selected by changing from first to second characters using nonalphanumeric keys in claim 24 effectively broadened the remote control’s (i.e., the “selection means”) character selection function from “cycling” to “changing.” As the court notes, the added “cycling” limitation was not eliminated; rather, it was broadened to “changing.” Youman, 679 F.3d at 1345. As discussed supra, we now determine whether the reissue claims’ broader aspects materially narrow relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured. We first address whether the “changing” limitation of the reissue claim materially narrows relative to the original claim. The “selection means” of original claim 1 has been construed to “cover the corresponding structure . . . described in the specification and equivalents thereof.” As discussed supra, the corresponding structure described in the Specification includes the up or down keys (i.e., non-alphanumeric keys) which are used as input to implement the occurrence of a character change from a first character to a second character, where the characters are the letters of the alphabet and the digits 0-9. Despite Appellants broadening the patented claims to an intermediate scope between the original and patented claims by modifying an added limitation as noted above, this is not a case, as in Mostafazadeh, 643 F.3d at 1356-57, where the modified limitations are shown to be in the prior art Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 14 relied upon by the Examiner in the original prosecution and therefore not materially narrowing. That is, the Examiner has not shown that these broader character-selection features that change displayed alphanumeric characters using non-alphanumeric keys in claim 24 are in the prior art that the Examiner relied upon in the original ‘733 patent’s application. See Youman, 679 F.3d at 1347 (“Where the modified limitation was contained in the prior art relied on by the examiner in the original prosecution, as the attachment pad was, the limitation is not materially narrowing.” (citing Mostafazadeh, 643 F.3d at 1361 n.4; emphasis added)). Accord Youman, 679 F.3d at 1347 (“Mostafazadeh establishes, as a ceiling for determining whether a modified limitation materially narrows, any recapture of surrendered subject matter that was in the prior art of the original prosecution.”) (emphasis added). During original prosecution, the Examiner rejected original claim 1 as obvious under § 103 over “(Young or Vogel) and Reed.”11 Non-Final Rej. mailed Jan. 30, 1996, at 2-4 (“Non-Final Rej.”). By relying on either Young or Vogel as the base reference in the rejection, the Examiner effectively alternatively rejected claim 1 as obvious over two separate grounds: (1) Young and Reed, or (2) Vogel and Reed. In these rejections, the Examiner found that each base reference (Young and Vogel) disclosed a “selection means,” namely (1) the “keys” (i.e., switches) 156 of Young’s remote controller in Figure 21, and (2) the four triangular and “sel” keys in Vogel’s Figure 2. Non-Final Rej. 2-3. Accord Youman, 679 F.3d at 1339 11 The Young patent is U.S. Patent 5,353,121, the Vogel patent is U.S. Patent 5,253,066, and the Reed patent is U.S. Patent 5,241,671. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 15 (summarizing the Examiner’s findings). The Examiner’s identified “selection means” in Young and Vogel is reproduced below: Young’s Figure 21 and Vogel’s Figure 2 showing Examiner’s identified “selection means” The Examiner found that while Young’s remote control issues control commands that are received and processed to generate and display television program titles, the Examiner admitted that Young lacks (1) displaying programs alphabetically by title, and (2) a selection means that allows a user to select a title by selecting at least the first character of the title. Non-Final Rej. 3. The Examiner acknowledged a similar deficiency regarding Vogel Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 16 despite disclosing a selection means. Id. To cure these deficiencies, the Examiner cited Reed’s multimedia search system of alphabetically-listed titles, where a user can select a title by entering one or more characters of the selected title to display the closest titles to the displayed entry. Id. (citing Reed col. 1, ll. 45-52; col. 4, ll. 28-37; col. 17, ll. 9-17). In light of these collective teachings, the Examiner concluded that original claim 1 would have been obvious. Accord Youman, 679 F.3d at 1339-40 (summarizing the Examiner’s rejection). There is no dispute that the “selection means” of original claim 1 would have been obvious over the collective teachings of either Young or Vogel and Reed, despite Reed’s using a keyboard’s alphanumeric keys to enter searchable titles.12 This point is all but conceded by Appellants’ narrowing amendment to that rejected claim to render it allowable during original prosecution, namely by adding the “cycling” limitation as noted previously. But on this record, we cannot say that Young, Vogel, and Reed disclose selecting each displayed alphanumeric character with a wireless remote control by changing from a first character to a second character using the remote control’s non-alphanumeric keys as recited in reissue claim 24. To the extent that this changing function—unlike cycling through each displayed character—is taught by typing in characters of a title as in Reed considered in light of either Young or Vogel we cannot say; nor will we speculate in that regard here in the first instance on appeal. 12 See, e.g., Youman, 679 F.3d at 1339 (“The Reed system is used on a personal computer with access to a keyboard of alphanumeric keys to enter searchable titles.”). Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 17 We therefore leave it to the Examiner to determine in the first instance, in this reissue application, whether the broader character selection features that change displayed alphanumeric characters using non-alphanumeric keys in claim 24 are shown in the prior art that was previously relied upon in the original prosecution.13 This is a crucial finding to determine material narrowing on this record, particularly in view of the scope of the means-plus-function limitations of original claim 1 noted previously.14 See Hester, 142 F.3d at 1483 (holding that explicitly reciting a “spiral conveyance path” in some reissue claims did not materially narrow original means-plus-function claims whose corresponding structure passed a conveyor belt through a spiral path). But what we can say is that where, as here, (1) Appellants modify during reissue a limitation that was added during original prosecution such that it is broader than the patented claim yet still narrows relative to the original claim (i.e., the original application’s claims before amendment or 13 As part of this inquiry, the Examiner should also consider whether other prior art applies under other patentability statutes in connection with the pending claims, such as 35 U.S.C. § 103. In this regard, we direct the Examiner’s attention to U.S. Patent 5,488,409 (Yuen) who, in column 56, lines 38 through 43, describes changing a character in a displayed title by pressing “CH UP” and “CH DN” keys to scroll the current character forward or backward. 14 Notably, Appellants’ Specification at column 10, lines 19-22, states: “A remote controller suitable for the present invention, such as shown in FIG. 3, which can be a remote controller manufactured by Universal Electronics or Presentation Electronics’ Silent Partner . . . ” which Appellants repeatedly acknowledge the operation thereof is “conventional” in the art. Col. 10, ll. 7-31. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 18 cancellation), and (2) the Examiner has not shown that this broader feature does not materially narrow (e.g., is in the prior art relied upon during original prosecution), recapture is avoided. See Youman, 679 F.3d at 1347- 48. Since the Examiner has not shown that reissue claim 24 does not materially narrow original claim 1 in the parent application, Appellants avoid recapture. We therefore need not determine whether claim 24 is materially narrowed in other respects via unclaimed “overlooked aspects” to avoid recapture—a separate inquiry that we need not address here. See id. Accordingly, we are persuaded of error in the Examiner’s recapture rejection under § 251 of (1) independent claim 24; (2) independent claim 40 which similarly broadens its corresponding patented claims, yet materially narrows the original claims; and (3) dependent claims 25-27, 29-39, 41-43, and 45-55 for similar reasons. NEW GROUND OF REJECTION During prosecution of the present broadening reissue application, the Examiner indicated that claims 1-23 are allowable. Final Rej. 3. Under 37 C.F.R. § 41.50(b), we enter a new ground of rejection against independent claims 1 and 12, under 35 U.S.C. § 103(a) as being unpatentable over Young or Vogel, in combination with Reed and the newly cited patent Yuen (US 5,488,409). In the parent application, the Examiner found that the combination of Young or Vogel and Reed teaches all of the limitations of the original claim 1 (reproduced supra). See Office Action mailed Jan. 30, 1996. As discussed supra, Appellants amended the claim Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 19 and the Examiner allowed the amended claim finding that the means for selecting characters by cycling was not obvious. In rejecting independent claims 1 and 12, we adopt the Examiner’s findings regarding the teachings of Young, Vogel, and Reed. Also, the newly-cited Yuen reference teaches the limitation of selection means for causing the characters to cycle forward and backward as recited in independent claims 1 and 12. Specifically, Yuen teaches entering data into a video system which uses channel up and down keys to scroll forward and backward through characters. Col. 56, ll. 34-54. We consider combining this data entry method with the teachings of Young, Vogel, and Reed would have been obvious as it is nothing more than using known methods to perform their established functions to yield predictable results. To be nonobvious, an improvement must be “more than the predictable use of prior art elements according to their established functions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). We have not reviewed claims 2-11 and 13-22 as well as claims 23— 27, 29-43, and 45-55 to the extent necessary to determine whether these claims are unpatentable over Yuen in combination with the other patents cited in the record. We leave it to the Examiner to determine the appropriateness of any further rejections based on this combination of references. CONCLUSION The Examiner erred in rejecting claims 24-27, 29-43, and 45-55 under § 251. Appeal 2010-007029 Application 09/313,532 Patent 5,629,733 20 DECISION The Examiner’s decision rejecting claims 24-27, 29-43, and 45-55 is reversed. We reject claims 1 and 12 under 35 U.S.C. § 103(a). REVERSED 37 C.F.R. § 41.50(b) babc Copy with citationCopy as parenthetical citation