Todd W. Sandwick

Patent Trials and Appeals Board

Jul 23, 2019

15201944 - (D) (P.T.A.B. Jul. 23, 2019)

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.
15/201,944 07/05/2016 Todd W. SANDWICK 20742.0002USRE 9826
52835 7590 07/23/2019
HAMRE, SCHUMANN, MUELLER & LARSON, P.C.
45 South Seventh Street
Suite 2700
Minneapolis, MN 55402-1683
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
PTOMail@hsml.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD W. SANDWICK
____________________

Appeal 2018-008369
Application 15/201,9441
Patent 8,827,696 B1
Technology Center 3900
___________________

Before ALLEN R. MacDONALD, RAE LYNN P. GUEST, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Introduction
Appellant2 appeals under 35 U.S.C. § 134 from a final rejection of
claims 1–3 and 21–44. We have jurisdiction under 35 U.S.C. § 6(b).

1 Filed July 05, 2016, seeking to reissue U.S. Patent 8,827,696 B1, issued
Sept. 09, 2014, based on Application 12/904,528, filed Oct. 14, 2010.
2 The Applicant and Appellant is Dean Ultra Thin Retainer, LLC. Appellant
notes that the real party in interest is the inventor, Todd W. Sandwick. App.
Br. 2.
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Appellant’s Invention
This invention relates to an orthodontic retainer system with a palatal
portion fabricated from a cast metallic material where the material is a
combination of cobalt, chromium and molybdenum. See Abstract.
Prosecution history of the original application (Findings of Fact, “FF”)
1. On October 14, 2010, Appellant filed an original application
12/904,528, of the patent for which reissue is sought. The original
application contained originally filed claims 1–20, the term “cast” or
“casting” was present in each independent claim.
2. On March 22, 2012, the Examiner required the original
application a restriction of the claims to one of three inventions identified by
the Examiner:
I. Original claims 1–5, drawn to a cast orthodontic retainer;
II. Original claims 6–15, drawn to a method of fabricating a
palatal portion of an orthodontic retainer; or
III. Original claims 18–20, drawn to a method of fabricating a
cast orthodontic retainer.
3. On April 5, 2012, Appellant elected in the original application
original claims 6–15 (species II), and withdrew claims 1–5 and 16–20.
Original claim 6 reads as follows:
6. A method of fabricating a palatal portion of an
orthodontic retainer, comprising:
providing a palate duplicate of a patient’s palate;
providing a sheet of malleable material;
creating a palatal impression by pressing said sheet of
malleable material against said palate duplicate; and
applying lost wax casting to said palatal impression to
fabricate a palatal portion of an orthodontic retainer from a metal
material.
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4. On May 16, 2012, the Examiner non-finally rejected original
application claims 6–15 under 35 U.S.C. §§ 103(a) and 112, second
paragraph, over various combinations of prior art and indefiniteness.
5. On August 16, 2012, in a response to the non-final office action
of May 16, 2012, Appellant cancelled original claims 6–15. Appellant
added new claims 21–25 to the original application. Newly added original
claim 21 reads as follows:
21. A method of fabricating a palatal portion of an
orthodontic retainer, comprising:
providing a blocked out duplicate of a patient’s palate and
upper teeth;
providing a sheet of malleable material;
warming up said sheet of malleable material;
creating a palatal impression by pressing said warmed up
sheet of malleable material against said blocked out duplicate of
a patient’s palate;
placing said palatal impression on a sprue tree;
enclosing said sprue tree and said palatal impression in a
container;
creating a mold by pouring investment material around
said sprue tree and said palatal impression within said container
and allowing said investment material to dry;
creating a negative impression of said palatal impression
within said mold by heating said hardened shell within a heating
device to melt said palatal impression; heating a metal material
until said metal material is molten;
injecting said molten metal material into said negative
impression of said palatal impression within said mold;
cooling said mold to form a palatal portion formed from
said metal material; and removing said palatal portion from said
hardened shell.
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5. On February 4, 2013, the Examiner finally rejected Appellant’s
claims 21–25 under 35 U.S.C. §§ 103(a) and 112, second paragraph, over
various combinations of prior art, written description, and indefiniteness.
6. On July 5, 2013, Appellant filed a request for continued
examination (RCE) and amended original claims 21–25. Appellant
amended original claim 21 to include subject matter of original claims 22
and 25 and canceled original claimed 22 and 24. Accordingly, amended
original claim 21 read as follows (with underlining showing language added
and strikeout showing material deleted by this amendment):
21. A method of fabricating a palatal portion of an
orthodontic retainer, comprising:
providing a blocked out duplicate of a patient’s palate and
upper teeth;
providing a sheet of malleable material;
warming up said sheet of malleable material;
creating a palatal impression by pressing said warmed up
sheet of malleable material against said blocked out duplicate of
a patient’s palate;
placing said palatal impression on a sprue tree;
enclosing said sprue tree and said palatal impression in a
container;
creating a mold by pouring investment material around
said sprue tree and said palatal impression within said container
and allowing said investment material to dry;
creating a negative impression of said palatal impression
within said mold by heating said a hardened shell within a
heating device to melt said palatal impression;
heating a metal material until said metal material is
molten, wherein said metal material is comprised of cobalt,
chromium and molybdenum;
injecting inserting said molten metal material into said
negative impression of said palatal impression within said mold;
cooling said mold to form a palatal portion formed from
said metal material; and
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removing said palatal portion from said hardened shell,
wherein said palatal portion is comprised of a thickness between
0.20 millimeters and 0.30 millimeters.
In addition to this amendment, Appellant stated (page 8):
It is respectfully submitted that none of the embodiments
disclosed or enabled by the Blechman reference would be
function at such minimal thicknesses. Neither acrylic resin
nor stainless steel, which have been used for many years in the
field of orthodontics for retainers, have the requisite strength to
function properly within a patient’s mouth at a thickness
between 0.2mm and 0.3mm. It is the discomfort caused by the
requirement of such high thicknesses (i.e. between 1.5mm and
4mm) which are used in the prior art which the present invention
is designed to prevent. The Applicant has herewith submitted a
132 declaration attesting to the previous facts.
The Liu reference was utilized as purporting to show usage
of VITALLIUM, which is a metal alloy comprised of cobalt,
chromium and molybdenum, in the field of dentistry. However,
the Liu reference teaches a “Method and Apparatus for a Dental
Implant System” as shown below. In its Specification, the Liu
reference discloses that its cover plate 124 and retaining wires
128, 129 may be comprised of VITALLIUM. The Applicant
respectfully submits that this is distinguishable from, and does
not provide support for, the use of cobalt, chromium and
molybdenum on the palatal portion of an orthodontic retainer.
7. On July 2, 2014, the Examiner allowed original claims 21, 23,
and 25 because
[t]he art of record does not teach or render obvious a method of
fabricating a palatal portion of an orthodontic retainer including
steps of a metal material comprised of cobalt, chromium and
molybdenum and a palatal portion having thickness between
0.20 mm and 0.30 mm and in combination with limitations set
forth in the claim(s).
Notice of Allowance 2–3. The Examiner further canceled the remaining
non-elected claims and withdrawn.
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8. On September 9, 2014, the Patent was issued as U.S. Patent
8,827,696 B1 (the ’696 patent), with original claims 21, 23, and 25
appearing as patent claims 1–3, respectively.
Prosecution of Reissue Application
9. On July 5, 2016, Appellant filed reissue application 15/201,944,
seeking to reissue the ’696 patent. Appellant presented patent claims 1-3
and newly added reissue claims 4-20 for consideration in a preliminary
amendment to the reissue application. Independent new reissue claims 4 and
12 read as follows:
4. An orthodontic retainer, comprising:
a palatal portion that is positionable against a palate of a
patient’s mouth, the palatal portion having a front edge with a
central point, a rear edge with an apex, a first free end and a
second free end;
the palatal portion consisting of a metal material;
the front edge is positionable adjacent lingual surfaces of
a patient’s teeth, and the front edge includes a plurality of
indentations and projections, the indentations are sized and
shaped to receive the lingual surfaces of the patient’s teeth;
the rear edge is curved toward the front edge, and a straight
line distance between the central point and the apex is less than
a straight line distance between the apex and the first free end.
12. A method of fabricating an orthodontic retainer for a
patient comprising:
based on a predetermined shape and arrangement of the
patient’s teeth, creating a palatal portion that is positionable
against a palate of the patient’s mouth, the palatal portion
consisting of a metal material; the palatal portion has a front edge
with a central point a rear edge with an apex, a first free end and
a second free end; the front edge is positionable adjacent lingual
surfaces of the patient’s teeth, and the front edge includes a
plurality of indentations and projections, the indentations are
sized and shaped to receive rear surfaces of the patient’s teeth;
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the rear edge is curved toward the front edge, and a straight line
distance between the central point and the apex is less than a
straight line distance between the apex and the first free end.
8. On February 7, 2017, in a non-final office action, the Examiner
rejected reissue claims 4–20 under 35 U.S.C. § 251 as
not described in the original patent specification and enable by
the original patent specification such that 35 USC 112, 1st
paragraph is satisfied [because] . . . the [’]696 patent does not
adequately support a metal palatal plate that is not cast. . . .
Therefore, claims 4-20, which eliminate[s] the casting
requirement do not satisfy the “original patent” requirement.
Non-Final Act. 3, 4–5. The Examiner also rejected reissue claims 1–11 and
16 under 35 U.S.C. § 251 “as being based upon a defective reissue
application for failing to file a timely divisional application to pursue
nonelected inventions.” Id. at 5–6. The Examiner also rejected reissue
claims 1–20 as being based on a defective declaration. The Examiner also
rejected reissue claims 4–20 under 35 U.S.C. § 112, first and second
paragraphs, as failing to comply with the written description requirement
and being indefinite. Non-Final Act. 6–8. The Examiner also rejected
reissue claims 4–6 and 8 under 35 U.S.C. § 103.
10. On August 7, 2017, in response to the non-final rejection of
February 7, 2017, Appellant cancelled reissue claims 4–20 and added new
reissue claims 21–44. New independent reissue claims 21, 25, 29, 33, 37,
and 41 read as follows:
21. An orthodontic retainer, comprising:
a U-shaped palatal portion that is positionable against a
palate of a patient’s mouth, the U-shaped palatal portion
consisting of a metal material;
the U-shaped palatal portion includes a plate-like member
having a front edge and a curved rear edge, the front edge is
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positionable adjacent lingual surfaces of a patient’s teeth, and the
front edge includes a plurality of indentations and projections,
the indentations are sized and shaped to receive the lingual
surfaces of the patient’s teeth; and
a labial wire that extends across a portion of the front edge of the
U-shaped palatal portion, the labial wire includes a first end and
a second end, and the first and second ends are soldered or
welded to the U-shaped palatal portion.

25. An orthodontic retainer, comprising:
a U-shaped palatal portion that is positionable against a
palate of a patient’s mouth, the U-shaped palatal portion
consisting of a cast metal material;
the U-shaped palatal portion includes a plate-like member
having a front edge and a curved rear edge, the front edge is
positionable adjacent lingual surfaces of a patient’s teeth, and the
front edge includes a plurality of indentations and projections,
the indentations are sized and shaped to receive the lingual
surfaces of the patient’s teeth; and a labial wire that extends
across a portion of the front edge of the U-shaped palatal portion,
the labial wire includes a first end and a second end, and the first
and second ends are soldered or welded to the U-shaped palatal
portion.

29. A palatal portion of an orthodontic retainer,
comprising:
a plate-like U-shaped member that is positionable against
a palate of a patient’s mouth, the plate-like U-shaped member
consisting of a metal material;
the plate-like U-shaped member having a front edge and a
curved rear edge, the front edge is positionable adjacent lingual
surfaces of a patient’s teeth, and the front edge includes a
plurality of indentations and projections, the indentations are
sized and shaped to receive the lingual surfaces of the patient’s
teeth.

33. A cast palatal portion of an orthodontic retainer,
comprising:
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a plate-like U-shaped member that is positionable against
a palate of a patient’s mouth, the plate-like U-shaped member
consisting of a cast metal material;
the plate-like U-shaped member having a front edge and a
curved rear edge, the front edge is positionable adjacent lingual
surfaces of a patient’s teeth, and the front edge includes a
plurality of indentations and projections, the indentations are
sized and shaped to receive the lingual surfaces of the patient’s
teeth.

37. A method of fabricating an orthodontic retainer for a
patient, comprising:
creating a U-shaped palatal portion that is positionable
against a palate of the patient’s mouth, the U-shaped palatal
portion consisting of a metal material, where the U-shaped
palatal portion includes a
plate-like member having a front edge and a curved rear edge,
the front edge is positionable adjacent lingual surfaces of a
patient’s teeth, and the front edge includes a plurality of
indentations and projections, the indentations are sized and
shaped to receive the lingual surfaces of the patient’s teeth;
soldering or welding first and second ends of a labial wire
to the U-shaped palatal portion so that the labial wire extends
across a portion of the front edge of the U-shaped palatal portion.

41. A method of fabricating an orthodontic retainer for a
patient, comprising:
casting a U-shaped palatal portion that is positionable
against a palate of the patient’s mouth, the U-shaped palatal
portion consisting of a cast metal material, where the U-shaped
palatal portion includes a plate-like member having a front edge
and a curved rear edge, the front edge is positionable adjacent
lingual surfaces of a patient’s teeth, and the front edge includes
a plurality of indentations and projections, the indentations are
sized and shaped to receive the lingual surfaces of the patient’s
teeth;
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soldering or welding first and second ends of a labial wire
to the U-shaped palatal portion so that the labial wire extends
across a portion of the front edge of the U-shaped palatal portion.
Each of these independent claims has claims that depend directly
therefrom that recite: (a) “wherein the metal comprises a metal alloy of
cobalt, chromium and molybdenum,” (b) that the U-shaped palatal portion
“has a thickness no greater than 0.30 mm;” and (c) that the U-shaped palatal
portion “has a thickness no greater than 0.20 mm.”

II. DISCUSSION
A. NEW GROUNDS OF REJECTION – RECAPTURE
PRINCIPLES UNDER 35 U.S.C. § 251
The statute
The reissue statute expressly permits a patentee to correct an “error”
thus permitting 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(a), (d), provide in
pertinent part:
Whenever any patent is, through error, 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.
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Recapture is not an error
within the meaning of 35 U.S.C. § 251
What has become known as 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).
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. U.S., 356 F.2d
541, 545 (Ct. Cl. 1966)).3 See also Hester Indus., Inc. v. Stein, Inc., 142
F.3d 1472, 1480 (Fed. Cir. 1998).
The Recapture Rule
Application of the recapture rule is a three step process.
The first step is to determine whether and in what aspect the
reissue claims are broader than the patent claims. [A] reissue
claim that deletes a limitation or element from the patent claims
is broader with respect to the modified limitation. Next, the court
must determine whether the broader aspects of the reissue claims
relate to surrendered subject matter. To determine whether an
applicant surrendered particular subject matter, we look to the

3 Haliczer is binding precedent. See South Corp. v. U.S., 690 F.2d 1368
(Fed. Cir. 1982) (en 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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prosecution history for arguments and changes to the claims
made in an effort to overcome a prior art rejection. . . .
. . . . In . . . [the] final step, the court must determine
whether the surrendered subject matter has crept into the reissue
claim. In discussing this third step, it is important to distinguish
among the original claims (i.e., the claims before the surrender),
the patented claims (i.e., the claims allowed after surrender), and
the reissue claims. Violation of the rule against recapture may be
avoided under this final step of the analysis if the reissue claims
“materially narrow” the claims relative to the original claims
such that full or substantial recapture of the subject matter
surrendered during prosecution is avoided.
To avoid violation of the rule against recapture in this way,
the narrowing must relate to the subject matter surrendered
during the original prosecution (i.e., the applicant cannot
recapture the full scope of what was surrendered).
In re Mostafazadeh, 643 F.3d 1353, 1358–59 (Fed. Cir. 2011) (internal
quotation marks and citations omitted) (emphasis added).
Objective Observer
It is clear that in determining whether “surrender” of
subject matter has occurred, the proper inquiry is whether an
objective observer viewing the prosecution history would
conclude that the purpose of the patentee’s amendment or
argument was to overcome prior art and secure the patent. . . .
Thus, if the objective public observer can discern a surrender of
subject matter during the prosecution of an original patent in
order to overcome prior art and obtain the patent, then the
recapture rule should prevent the reissuing of that patent to claim
the surrendered subject matter.
Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006) (internal
citations and footnote omitted) (emphasis added).
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
Appeal Brief and Reply Brief arguments. However, we enter a new ground
of rejection of claims 1–3 and 21–44 under 35 U.S.C. § 251 because the
additional claims, alleged to be the corrected error, violate the recapture rule
and thus “is not an error of the kind which will justify the granting of a
reissue patent which includes the [subject] matter withdrawn.” Mentor
Corp., 998 F.2d at 995 (internal quotation marks and citations omitted).
A. Section 251 Rejection
A.1. Recapture Test – Step One
Application of the recapture rule is a three step process.
The first step is to determine whether and in what aspect the
reissue claims are broader than the patent claims. [A] reissue
claim that deletes a limitation or element from the patent claims
is broader with respect to the modified limitation.
Mostafazadeh, 643 F.3d at 1358 (internal quotation marks, and citations
omitted) (emphasis added).
Panel’s Analysis:
As to step 1, Appellant broadens the patent scope through the addition
of claim 21–44 which, among other things, remove the combined limitations
of (1) “wherein said metal material is comprised of cobalt, chromium and
molybdenum” and (2) “said palatal portion is comprised of a thickness
between 0.20 millimeters and 0.30 millimeters.” None of the claims contain
both limitations which were added to original claim 21. FF6. New
dependent claims 22, 26, 30, 34, 38, and 42 recite the metal material
limitation, but do not recite the thickness limitation. New dependent claims
23, 24, 27, 28, 31, 32, 35, 36, 39, 40, 43, and 44 recite a thickness limitation,
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but do not recite the metal material limitation. Further, the thickness ranges
recited in these claims, namely “a thickness of no greater than 0.30 mm” and
“a thickness of no greater than 0.20 mm” include thickness of less than 0.20
which includes thicknesses less than 0.20 mm, that was not part of the
subject matter originally added to original claim 1.
A.2. Recapture Test – Step Two
Next, the court must determine whether the broader aspects of
the reissue claims relate to surrendered subject matter. 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.
Mostafazadeh, 643 F.3d at 1358 (internal quotation marks and citations
omitted) (emphasis added).
Panel’s Analysis
We determine that two limitations, namely (1) “wherein said metal
material is comprised of cobalt, chromium and molybdenum” and (2) “said
palatal portion is comprised of a thickness between 0.20 millimeters and
0.30 millimeters,” were added to original claim 21 (patent claim 3) in an
effort to overcome a prior art rejection.
Before the amendment, original claim 21 stood rejected over prior art.
FF5. Appellant amended claim 21 to include the subject matter of both
original claim 22 (metal material) and 24 (thickness range). FF6. Because
original claims 22 and 24 both depend separately from original claim 21,
there were no claims at issue prior to the amendment that included both the
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metal material and the thickness range that were added to original claim 21
by amendment.
Amending original claim 21 to include both the limitations of claim
22 and 24 in response to a rejection based on prior art is sufficient evidence
to conclude, without more, that subject matter was surrendered (i.e., a palatal
portion of an orthodontic retainer without the recited material and of a
thickness other than the specific range recited) in an effort to overcome a
prior art rejection. See Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1481
(Fed. Cir. 1998) (“an amendment to overcome a prior art rejection evidences
an admission that the claim was not patentable”); cf. Honeywell Int’l Inc. v.
Hamilton Sundstrand Corp., 370 F.3d 1131, 1141 (Fed. Cir. 2004) (“A
presumption of surrender [for purposes of the doctrine of equivalents]
therefore arises if rewriting the dependent claims into independent form,
along with canceling the original independent claims, constitutes a
narrowing amendment.”).
Moreover, the arguments and evidence (Sandwick’s 132 Declaration)
provided during the prior prosecution, arguing that “acrylic resin nor
stainless steel . . . have the requisite strength to function properly within a
patient’s mouth at a thickness between 0.2mm and 0.3mm,” implying that
“VITALLIUM,” i.e., a metal alloy comprised of cobalt, chromium, and
molybdenum has the requisite strength to achieve a more comfortable
thinner palatal portion having a thickness between 0.2 mm and 0.3 mm.
FF6.
Finally, the Examiner stated when allowing the original patent that the
prior art did not teach or suggest “a method of fabricating a palatal portion
of an orthodontic retainer including steps of a metal material comprised of
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cobalt, chromium and molybdenum and a palatal portion having thickness
between 0.20 mm and 0.30 mm and in combination with limitations set forth
in the claim(s).” See FF7. In light of the Prosecution History, the
limitations, which are absent in reissue claims 21–44, relate directly to the
surrendered subject matter.
Patent claim 1 was thus amended during prosecution to include the
composition of the metal material and the thickness of the palatal portion.
The ’696 patent was allowed based on the specific amendment and not on
any other grounds evidenced by the Examiner indicating that the subject
matter recited claimed in original claims 22 and 24 rendered the original
claim 21 (patent claim 1) allowable over the prior art. See FF7.
A.3. Recapture Test – Step Three
In . . . [the] final step, the court must determine whether the
surrendered subject matter has crept into the reissue claim. In
discussing this third step, it is important to distinguish among the
original claims (i.e., the claims before the surrender), the
patented claims (i.e., the claims allowed after surrender), and the
reissue claims. Violation of the rule against recapture may be
avoided under this final step of the analysis if the reissue claims
“materially narrow” the claims relative to the original claims
such that full or substantial recapture of the subject matter
surrendered during prosecution is avoided.
To avoid violation of the rule against recapture in this way,
the narrowing must relate to the subject matter surrendered
during the original prosecution (i.e., the applicant cannot
recapture the full scope of what was surrendered).
Mostafazadeh, 643 F.3d at 1358–59 (emphasis added).
Panel Determination
We conclude that none of the claims contain both limitations which
were added to patent claim 1 to secure patentability. FF6. No independent
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reissue claims include any specific metal material or any specific palatal
portion thickness. FF10. New dependent reissue claims 22, 26, 30, 34, 38,
and 42 recite the metal material limitation but do not recite the thickness
limitation. Id. New dependent reissue claims 23, 24, 27, 28, 31, 32, 35, 36,
39, 40, 43, and 44 recite a thickness limitation, but do not recite the metal
material limitation. Id. Further, the thickness ranges recited in these reissue
claims, namely “a thickness of no greater than 0.30 mm” and “a thickness of
no greater than 0.20 mm” include thickness of less than 0.20, which is
includes thicknesses less than 0.20 mm, that was not part of the subject
matter added to patent claim 1. It does not appear that any of the newly
added reissue claims 21–44 are narrower in scope than the subject matter of
patent claim 1. It follows that Appellant’s reissue claims 21–44 fail to avoid
the recapture rule because they have been broadened to include surrendered
subject matter, but have not been narrowed in any material respect.
A.4. Overlooked Aspects
Whereas the recapture rule applies when surrendered subject
matter is being reclaimed, overlooked aspects by definition were
never claimed and thus never surrendered. See Mostafazadeh,
643 F.3d at 1360. Rather, as we explained in Mostafazadeh,
“overlooked aspects” is a separate inquiry under reissue that is
independent of whether or not the recapture rule applies.
In re Youman, 679 F.3d 1335, 1347 (Fed. Cir. 2012) (internal footnote
omitted).
Panel Determination
Because we raise this subject matter as recaptured subject matter for
the first time as a new ground, Appellant has not argued that the subject
matter is merely “overlooked aspects.” Nonetheless, because broader
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original claim 21 did not include this subject matter, and it was added to
specifically address prior art rejections, we find that this subject matter does
not constitute an “overlooked aspect.”
A.5. New Ground of Rejection
For the reasons discussed above, we enter a new ground of rejection
as follows: claims 21–44 stand rejected under 35 U.S.C. § 251, as being a
defective reissue application for violation of the recapture rule.

B. REJECTIONS ON APPEAL
Because we enter the new ground of rejection above, which renders the
reissue application defective and addresses all of the claims of the reissue
application, we need not address the Examiner’s further rejection of the claims
on appeal. However, for the benefit of compacted prosecution,4 we further
address the rejections maintained by the Examiner.
B.1. Claims 21–24, 29–32, and 37–40 do not recite “cast” or “casting”
B.1.a. Section 112, first paragraph, Written Description
The Examiner rejected reissue claims 21–24, 29–32, and 37–40 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement, for failing to limit the scope of the claims to
methods that do not involve casting. Final Act. 7–8. The Examiner
determined that the rejected reissue claims are not described or enabled by
the original patent disclosure. Id. The Examiner reasoned that the reissue
claims did not specifically recite that the palatal portion was “cast” and the

4 Should Appellant amend the claims and file an amended declaration
addressing the new ground of rejection, the claims as amended may still
render unresolved the issues raised by the Examiner.
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written description of the ’696 patent included only a cast orthodontic
retainer system. Final Act. 3–4. The Examiner concluded that “[w]hile a
claim that does not specify how the palatal plate is formed would include a
palatal plate that is cast, the Specification does not support that the Applicant
had possession of a metal palatal plate that was not cast.” Final Act. 4 and
8–9.
In addition to citing to portions of the ’696 patent that are silent as to
the process used for making a palatal portion of an orthodontic retainer,
Appellant argued that the Examiner admitted, during the initial prosecution
of the ’696 patent, that the process can be done by different processes such
as molding or 3D printing. App. Br. 9 (citing Restriction Requirement
mailed March 22, 2012, 2:14–15).
In the Answer, the Examiner further explained that citing to a
preferred embodiment and cited portions of the ’696 patent, where no other
method of fabrication other than casting is disclosure, does not suggest
possession of non-casting methods. Ans. 5. However, the Examiner does
not respond to the purported admission during prosecution of the ’696
patent. See generally Ans.
Panel Determination
We see this as a case where Appellant contends the disclosure of a
species, namely casting, provides sufficient written descriptive support for a
genus, namely fabricating by any method including casting, where the ’696
patent does not expressly disclose other fabrication methods or the genus of
the encompasses any fabrication method.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as
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originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in
the specification for the claim language.
In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
It is a general rule that the “disclosure of a species may be sufficient
written descriptive support for a later claimed genus including that species.”
Bilstad v. Wakalopulos, 386 F.3d 1116, 1124 (Fed. Cir. 2004). There are
several exceptions to that general rule. If the difference between members
of the group is such that the person skilled in the art would not readily
discern that other members of the genus would perform similarly to the
disclosed members, i.e., if the art is unpredictable, then disclosure of more
species is necessary to adequately show possession of the entire genus. Id.
at 1125; Hynix Semiconductor Inc. v. Rambus Inc., 645 F.3d 1336, 1352
(Fed. Cir. 2011) (“Whether the genus is supported vel non depends upon the
state of the art and the nature and breadth of the genus.”) Additionally, there
is no support if the specification specifically distinguishes the prior art as
inferior and touts the advantages of the species. See Hynix, 645 F.3d at 1352
(“There was substantial evidence that the invention would not be
undermined by the use of [other species of the genus].”). Such statements
make clear that the written description discloses only the species and nothing
broader. Bilstad, 386 F.3d at 1124.
We find no such exceptions in this case. Rather, we have an
Examiner on record specifically stating “[i]n the instant case the product as
claimed can be made by another and materially different process such as by
molding, 3D printing” to explain why the process of making and the product
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being made are distinct.5 Restriction Requirement 2, mailed March 22,
2012. In doing so, the Examiner presented evidence that the person skilled
in the art arguably would have discerned that other members of the
fabrication method genus (namely, molding and 3D printing) would have
been understood to perform similarly to the expressly disclosed species
(casting). The Examiner’s identification of these alternative manufacturing
processes arguably is some evidence that the art is generally predictable,
such that the specific disclosures of other species would not be necessary to
show possession. Similarly, there is no indication that the ’696 patent
distinguished other manufacturing processes as inferior or indicated that
casting is particularly critical or unique to suggest that the inventor had
possession only of casting. The fact that the Examiner did not address this
evidence substantively necessitates our considering the evidence favorably
for the Appellant.
Accordingly, we do not sustain the Examiner’s rejection based on 35
U.S.C. § 112, first paragraph, for failing to provide written descriptive
support.
B.1.b. Section 251, “original patent” clause
The Examiner finally rejected reissue claims 21–24, 29–32, and
37–40 under 35 U.S.C. § 251 for not meeting the “original patent” clause.
Final Act. 3. The Examiner determined that the rejected claims are not
described or enabled by the “original patent” disclosure for essentially the

5 We note that at the time of the Restriction Requirement each of the
pending original claims recited a cast palatial portion.
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same reason set forth above for the written description analysis. Similarly,
Appellant’s response is substantially the same arguments.
Panel Determination
The “original patent” standard and the written description
requirement are not the same. Where the written description
requirement is based on what the skilled artisan would have
understood was within the possession of the inventor, recent Federal
Circuit case law indicates that the original patent requirement under
§ 251 requires something more:
Thus, for broadening reissue claims, the specification of
the original patent must do more than merely suggest or indicate
the invention recited in reissue claims; “[i]t must appear from the
face of the instrument that what is covered by the reissue was
intended to have been covered and secured by the original.”
Indus. Chems., 315 U.S. at 676 . . . (emphasis added). Stated
differently, the original patent “must clearly and unequivocally
disclose the newly claimed invention as a separate invention.”
Antares, 771 F.3d at 1362. We apply the standard set forth in
Industrial Chemicals and Antares to this case and hold that the
reissue claims are invalid.
Forum US, Inc. v. Flow Valve, LLC, Appeal 2018-1765, slip op. 8-9, 2019
WL 2494728 (Fed. Cir. June 17, 2019) (underlining added).
The facts of Forum are similar to our case as issue. In Forum, the
patent claims recited “[a] workpiece machining implement comprising . . . a
plurality of arbors.” Forum US, slip op. at 4 (emphasis omitted). The newly
added reissue claims removed the “plurality of arbors” limitation and thus
encompassed a scope that include either arbors or no arbors. Id. at 5. The
face of the patent itself does not describe any arbor-less embodiments, but
Declaration evidence submitted indicates that “a worker of ordinary skill
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would understand that not every fixture disclosed in the patent requires a
‘plurality of arbors’” and that “‘the arbors are an optional feature,’” pointing
to parts of the patent that could be read more generically. Id. at 9 (internal
citation omitted). The Court found that
We conclude that the Iafrate declaration, when viewed in the
light most favorable to Flow Valve, does not raise a genuine
dispute of material fact. The Iafrate declaration does not aid the
court in understanding what the “instruments . . . actually say,”
but instead asserts what a person of ordinary skill in the art would
purportedly understand in the absence of the disclosure of an
arbor-less embodiment. . . . Indeed, nowhere do the written
description or drawings disclose that arbors are an optional
feature of the invention. Even if a person of ordinary skill in the
art would understand that the newly claimed, arbor-less
invention would be possible, that is insufficient to comply with
the standard set forth in Industrial Chemicals and Antares.
Id. at 9-10 (internal citations omitted).
Here, we face the same situation. The ’696 patent may contain more
generic language, but the face of the ’696 patent does not describe
fabrication by any method other than casting, i.e., non-casting methods.
Similarly, while the Examiner’s admission may be sufficient to show what
one of ordinary skill in the art would have understood about possession of
inventions within the ’696 patent, what one of ordinary skill in the art would
have understood that other methods, such as injection molding or 3D
printing, were possible or even conventional, such is insufficient to comply
with the original patent requirement of 35 U.S.C. § 251.
Accordingly, we agree with the Examiner and sustain the Examiner’s
rejection of reissue claims 21–24, 29–32, and 37–40 under 35 U.S.C. § 251,
for not meeting the “original patent” clause.
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B.2. Claim 21–28 and 37–44 are directed to non-elected inventions
Rejections on Appeal
The Examiner rejected reissue claims 21–28 and 37–44 under
35 U.S.C. § 251, for including subject matter directed to non-elected
inventions subject to a Restriction Requirement during the prosecution of the
’696 patent. Final Act. 6. Specifically, reissue claims 21–28 and 37–44 are
either directed to the retainer apparatus or a method of forming the entire
retainer, as opposed to the elected invention of original claims 6–15 directed
to forming only the palatal portion of a retainer. Id.; see FF2–3. The
Examiner finds that claiming subject matter directed to unelected inventions
is impermissible by reissue after “failing to file a timely divisional
application to pursue nonelected inventions.” Id.
Appellant argues that the claims are not substantially identical to
those of the non-elected groups of the restriction requirement. Appellant
points out that new independent reissue claims 21 and 25 are narrower than
original application claim 1, which was also directed to an orthodontic
retainer, and that new independent claims 37 and 41 are narrower than
original application claim 18, which was also directed to a method of
fabricating an orthodontic retainer, in that claims 1 and 18 used open
“comprising” language such that the palatal portion could be made of
materials in addition to “a cast metallic material,” while reissue claims 21,
25, 37, and 41 uses more narrow “consisting of” language, such that the
portion can only be made of metal, in addition to noting other features not
recited in original claims 1 and 18. App. Br. 9–12. Appellant also points
out that reissue claims 21 and 37 are broader in scope because they do not
require that the palatal portion be cast. Id.
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Panel Determination
As noted by Appellant,
The recapture rule, as it relates to claimed subject matter
previously subject to a restriction requirement and not pursued in
a divisional application, prevents granting of reissue claims that
are substantially identical to the non-elected, non-pursued
claims. In re Orita, 550 F.2d 1277 (CCPA 1977). In particular,
as stated in Orita, “Finally, granting by reissue claims
substantially identical to those non-elected in application []
would be ignoring the proper restriction requirement set forth in
that application in which appellants acquiesced[.]” Id at 1280.
App. Br. 9. The fact that the reissue claims are narrower than the
non-elected claims is not persuasive nor even particularly relevant to
whether or not the subject matter is improperly recaptured. Appellant does
not argue that the subject matter of the new reissue claims are not directed
towards inventions distinct from the invention elected and prosecuted to
allowance in the ’696 patent, consistent with the initial findings of the
restriction requirement in the first place. Moreover, narrower reissue claims
fall clearly within the scope of the broader original non-elected claims, and
thus within the scope of the non-elected and restricted inventions that should
have been properly pursued in a divisional application, whether claimed
more broadly or more narrowly.
Likewise, we are not persuaded by the fact that, in at least one respect,
claims 21 and 37 are broadened because they do not recite that the palatal
portion is cast. In addition to not meeting the “original patent” requirement,
as discussed above, Appellant has not shown that the scope encompassed by
the reissue claims, which include both cast and non-cast metal palatal
portions, are distinct from and thus are “overlooked aspects” distinguishable
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from the non-elected original claims. Because the scope of the broader
reissue claims, which encompasses both cast and non-cast embodiments,
encompasses the narrower non-elected “cast” embodiments of the original
claims, such an argument is not persuasive without further explanation to
distinguish the reissue claims from the non-elected original claims.
Accordingly, we affirm the Examiner’s rejection of reissue claims 21–
28 and 37–44 under 35 U.S.C. § 251, for including subject matter directed to
non-elected inventions subject to a Restriction Requirement during the
prosecution of the ’696 patent.
B.3. Defective Declaration
The Examiner also rejects reissue application claims 1–3 and 21–44
under 35 U.S.C. § 251, for having a defective declaration because the
declaration states that reissue claims 4 and 12 are being filed based on a
failure to recognize that the retainer need not be cast, but both reissue claims
4 and 12 are cancelled. Final Act. 6.
Appellant does not present substantial arguments with respect to this
rejection (see generally App. Br.), but contends that “the reissue declaration
is only defective if it is determined that the feature that the palatal portion
need not be cast is not supported by the original patent.” Reply Br. 1.
Panel Determination
Appellant’s argument is not persuasive for two reasons. First, the
Examiner is correct that the stated error must be corrected by the reissue
claims. If the error, identified by Appellant, is specifically directed only to
new claims that are later cancelled, which are the facts here, then the
declaration must be defective on this basis alone. Second, as argued by
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Appellant, we determined that the feature that the palatal portion is not cast
is not supported by the original patent for the reasons discussed above.
Accordingly, we sustain the Examiner’s rejection of reissue
application claims 1–3 and 21–44 under 35 U.S.C. § 251, for having a
defective declaration because the declaration states that reissue claims 4 and
12 are being filed based on a failure to recognize that the retainer need not
be cast, but both reissue claims 4 and 12 are cancelled.6
DECISION
The following new ground of rejection is set forth herein:
(1) reissue claims 21–44 rejected under 35 U.S.C. § 251, as being a
defective reissue application for violation of the recapture rule.
The following rejections are sustained:
(1) reissue claims 21–24, 29–32, and 37–40 rejected under
35 U.S.C. § 251 for not meeting the “original patent” clause; and
(2) reissue claims 21–28 and 37–44 rejected under 35 U.S.C. § 251,
for including subject matter directed to non-elected inventions

6 Although we affirm the Examiner’s rejection of reissue application claims
1–3 based on a defective oath, identical patent claims 1–3 continue to exist
with their normal presumption of validity because, under 35 U.S.C. § 252,
the surrender of the 8,827,696 patent does not take effect until the reissue
patent issues.
Reissue application claims 1–3 alone cannot support a reissue
application. See In re Keil, 808 F.2d 830, 830 (Fed.Cir.1987) (Section 251
requires a change in “either the patent specification or claims.”).
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subject to a Restriction Requirement during the prosecution of the
’696 patent;
(3) reissue claims 1–3 and 21–44 rejected under 35 U.S.C. § 251, for
having a defective declaration because the declaration states that
claims 4 and 12 are being filed based on a failure to recognize that
the retainer need not be cast, but both claims 4 and 12 are
cancelled.
The following rejection is not sustained:
(1) reissue claims 21–24, 29–32, and 37–40 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, for failing to limit the scope of the claims to methods
that do not involve casting.
The Examiner’s decision to reject reissue claims 1–3 and 21–44 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).

AFFIRMED; 37 C.F.R. § 41.50