Diamabrush LLC

Patent Trials and Appeals Board

Jul 20, 2020

2020003920 (P.T.A.B. Jul. 20, 2020)

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.
14/062,550 10/24/2013 Simon Palushaj 01016-0027 5083
109973 7590 07/20/2020
Bejin Bieneman PLC
2000 Town Center
Suite 800
Southfield, MI 48075
EXAMINER
KAUFMAN, JOSEPH A
ART UNIT PAPER NUMBER
3993
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON PALUSHAJ
Appeal 2020-003920
Reissue Application 14/062,550
Patent 8,043,144 B2
Technology Center 3900

Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
ROBERT L. KINDER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Patentee1 appeals from the
Examiner’s decision to reject Reissue Claims 1–4 and 6–19 in the
application for reissue of U.S. Patent No. 8,043,144 B2 (this issued patent
hereinafter referred to as “Palushaj ’144”). Patentee’s counsel presented oral
argument on June 1, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Patentee to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Patentee identifies the real party in interest as “Diamabrush
LLC.” Appeal Br. 3.
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Reissue Application 14/062,550
Patent 8,043,144 B2

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CLAIMED SUBJECT MATTER
Palushaj ’144 is directed to “a reinforced abrasive abrading and
grinding device for sanding hard floors and surfaces, for example cement,
stone or imitation stone.” Palushaj ’144 1:15–17. Palushaj ’144 issued on
October 25, 2011, with Patented Claims 1-14, one of which (i.e., Patented
Claim 1) was in independent form. On October 24, 2013, Patentee filed the
present reissue application amending each of these fourteen claims, i.e.,
Reissue Claims 1-14. See Reissue Application Transmittal and
accompanying documents. Later, a second independent claim (i.e., Reissue
Claim 15) and new dependent claims, i.e., Reissue Claims 16–20, were
submitted. See Response to Non-Final Office Action dated June 16, 2014.
During prosecution of the present application, dependent Reissue Claims 5
and 16 were canceled. See Preliminary Amendment in the present
application, dated September 18, 2017. Further prosecution ensued,
resulting in Reissue Claims 1–4, 6–15, and 17–20 being the claims presently
on appeal.2 Pending independent Reissue Claims 1 and 15, with markings
showing the changes sought from the Patented Claims, are reproduced below
and are illustrative of the claimed subject matter on appeal:

2 During this process (and perhaps inadvertently), Reissue Claims 17–20
were renumbered as Reissue Claims 16–19, respectively. Compare
Patentee’s September 18, 2017 numbering with the numbering in the
Examiner’s Non-Final Office Action dated March 14, 2018, which identifies
claims 1–4 and 6–19 as pending and rejected (not claims 1–4, 6–15, and 17–
20). We note that Reissue Claims 6–15 were not likewise renumbered due
to the similar cancellation of Reissue Claim 5. Patentee adopted this new
numbering (i.e., 1–4 and 6–19) in the August 14, 2018 listing of the Reissue
Claims as well as in the Appeal Brief. See Appeal Br. 22 (Claims
Appendix). For consistency, we adopt this new numbering as well.
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Patent 8,043,144 B2

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1. An abrasive hard surface preparation device for use with
a rotary device, the abrasive hard surface preparation device
comprising:
a rotatable housing;
at least [one substrate layer having a first end connected]
two adjacent abrasive elements each abrasive element including
abrasive particles, the abrasive element operatively mounted to
the housing [and an opposite second end, the at least one
substrate layer including a first substrate layer and a second
substrate layer arranged adjacent the first substrate layer] for
substantially continuous contact with [no intermediate substrate
layer disposed between the first and second substrate layers;
and
an abrasive material attached to at least the second end of
the at least one substrate layer, at least a portion of the at least
one substrate layer adjacent the abrasive material being] the
hard surface, and positioned [obliquely] at an acute angle
rearward from the normal motion of the housing with respect to
the housing, and the [first and second substrate layers] at least
two abrasive elements being separated from one another such
that [the abrasive material attached to the first and second
substrate layers does] adjacent abrasive elements do not contact
[any portion] one another wherein the abrasive particles are
configured to wear off during use, wherein at least a portion of
at least one of the adjacent [substrate layer] abrasive elements
adjacent the abrasive material is substantially planar, the
abrasive element having a width and a length and the width is
greater than the length and the abrasive element is a blade.

15. An abrasive hard surface preparation device for use with
a rotary device to prepare a substrate where the substrate has a
coating, the abrasive hard surface preparation device
comprising:
a rotatable housing;
at least two downwardly extending adjacent abrasive
elements, each abrasive element including an abrasive material
bonded thereto, the abrasive element mounted to the housing
such that the abrasive element will be in substantially
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Patent 8,043,144 B2

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continuous contact with the substrate during use and the
abrasive element is presented to the substrate at an at an acute
angle rearward from the normal motion of the housing and the
at least two abrasive elements being separated from one another
such that adjacent abrasive elements do not contact one another
wherein the abrasive material faces forward to a normal
direction of rotation in order to grind a substrate without
melting the material on the substrate with the abrasive material
wearing off during use wherein the abrasive element is a blade
having a width and a length and the width is greater than the
length.
REJECTION
Reissue Claims 1–4 and 6–19 (i.e., all the claims on appeal) are
rejected 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. See Non-Final Office Action dated June
5, 2019 (hereinafter “Non-Final Act.”), 3; see also Appeal Br. 5.
BACKGROUND
Independent Original Claim 7 and Original Claim 8, which depended
therefrom, were filed in U.S. Application 12/707,339 on February 17, 2010
(“the ’339 application”). See Application dated February 17, 2010. The
’339 application eventually matured into Palushaj ’144. The Examiner’s
first office action rejected Original Claim 7 as anticipated under 35 U.S.C.
§ 102(b) but only objected to Original Claim 8. See Non-Final Office
Action dated September 30, 2010, Office Action Summary. In an
Amendment, filed January 6, 2011, Patentee remarked, “[i]ndependent
[Amended] claim 7, from which allowable [Original] claim 8 directly
depends, has been rewritten to include the recitations of allowable [Original]
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claim 8. [Original] Claim 8 has accordingly been cancelled.” Patentee’s
Amendment dated January 6, 2011, 6. In particular, with respect to the
anticipation rejection, Patentee remarked “The rejection is respectfully
traversed with respect to [Original] claim[s] 7, 11 and 12. [Original] Claim
7 has been amended to include the recitations of allowable [Original] claim
8.” Id. At the same time, Patentee stated, “[n]ew claims 14-27 have been
added.” Id.; see also Appeal Br. 14 (“Applicant also added new claim 18 –
which also included the subject matter of previously allowed [Original]
claim 8.”). Thereafter, in a Final Office Action dated March 30, 2011, the
Examiner stated that Amended claim 7 was “allowed,” but that New Claims
18-27 were rejected as (a) being “indefinite,” for lack of antecedent basis,
and (b) “objected to . . . as being a substantial duplicate of claims 7, 10 and
13–17.” See Final Office Action dated March 30, 2011, 2. Patentee
responded by submitting Amended Claim 18 to provide antecedent basis and
by cancelling Amended Claims 1–7 and 13–17 and further amending
Amended Claim 10 to depend (indirectly) from Amended Claim 18). See
Patentee’s Amendment dated May 31, 2011, 2. Upon such action, the
Examiner issued a Notice of Allowance and also provided a Reason for
Allowance addressing the Original Claim 8 limitation that was added to both
Amended Claim 7 and New Claim 18. See Notice of Allowance dated June
20, 2011, 2. The Examiner stated in the Reason for Allowance that
Amended Claim 18 is allowed because the
prior art of record . . . neither anticipates nor renders obvious,
the substrate layer adjacent the abrasive material being
positioned obliquely with respect to the housing, and the first
and second substrate layers being separated from one another
such that the abrasive material attached to the first and second
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substrate layers does not contact any portion of the adjacent
substrate layer, in combination with the rest of the limitations in
[Amended] claim 18.
Id. at 2. Amended Claim 18 of the ’339 application issued as Patented
Claim 1, with the remaining allowed Amended Claims 9–12 and 19–27,
reordered, issuing as Patented Claims 2–14 of Palushaj ’144.
PRINCIPLES OF LAW
The Reissue Statute allows a patentee to broaden claims in its issued
patent within two years if the patentee can show “error.” 35 U.S.C. § 251.3
Yet “[n]ot every” circumstance “that might be labeled ‘error’ is correctable
by reissue.” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir.
1998). One circumstance “that does not satisfy the ‘error’ requirement” of
the Reissue Statute “is embodied by the recapture rule.” In re Youman, 679
F.3d 1335, 1343 (Fed. Cir. 2012). “The 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.
The determination as to whether reissue claims violate the recapture
rule involves a three-step analysis. Youman, 679 F.3d at 1343. “Under the
first step, we determine whether and in what aspect the reissue claims are
broader than the patent claims.” Youman, 679 F.3d at 1343 (internal
quotations omitted). Under the second step, we “determine whether the

3 Palushaj ’144 issued on October 25, 2011, and the application on appeal
was filed on October 24, 2013, which is within the two-year window
required by the Reissue Statute.
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broader aspects of the reissue claims relate to surrendered subject matter.”
Youman, 679 F.3d at 1343 (internal quotations omitted). If the reissue
claims are broader relative to the patented claims in a manner related to
surrendered subject matter, then under the third step, we “determine whether
the surrendered subject matter has crept into the reissue claim.” Youman,
679 F.3d at 1344 (internal quotations omitted). Satisfaction of these steps,
and thus, violation of the recapture rule, may be avoided if “the [reissue]
claims are materially narrowed in a way that avoids substantial or whole
recapture of the surrendered subject matter.” Youman, 679 F.3d at 1344–
1345. The materially narrowing analysis is conducted on a limitation-by-
limitation basis and the frame of reference is the original claim--the claim
prior to the surrendering amendment or cancelation. See Youman, 679 F.3d
at 1345, 1346; see also id. at 1347 (“[I]f 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.”).
In other words, “a limitation that is added during prosecution to
overcome prior art cannot be entirely eliminated on reissue because doing so
would constitute recapture of the surrendered subject matter.” In re
Mostafazadeh, 643 F.3d 1353, 1359 (Fed. Cir. 2011).
ARGUMENTS
Patentee initially contends that “Prosecution Was Improperly Re-
opened.” Appeal Br. 6. Patentee references MPEP §§ 1207.03, 1207.04 in
support thereof contending there was “no basis on which to reopen
prosecution.” Appeal Br. 6; see also id. at 7. However, this is not a matter
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within the jurisdiction of the Board; instead, it is a matter subject to a
petition to the Director. See 37 C.F.R. § 1.181 (2019). For example, we
have been instructed that decisions of the Examiner directly relating to the
rejection of claims are subject to appeal. See In re Searles, 422 F.2d 431,
434–35 (CCPA 1970) (“because the question involved is ‘determinative of
the rejection’ it is properly an appealable matter”). “These questions
generally deal with the merits of the invention, involving factual
determinations and the legal conclusions drawn therefrom regarding the
application disclosure, the claims and the prior art.” Searles, 422 F.2d at
435. Here, however, the Examiner’s decision to reopen prosecution deals
“with procedural matters, such as whether an affidavit or amendment is
untimely, and formal requirements, such as whether a new application title
will be required, [which] are reviewable upon petition.” Searles, 422 F.2d at
435. Our reviewing court also stated in In re Hengehold, 440 F.2d 1395,
1403 (CCPA 1971) (footnote omitted) that
[t]here are a host of various kinds of decisions an examiner
makes in the examination proceeding—mostly matters of a
discretionary, procedural or nonsubstantive nature—which have
not been and are not now appealable to the board or to this
court when they are not directly connected with the merits of
issues involving rejections of claims, but traditionally have
been settled by petition to the Commissioner.
Accordingly, we do not address this argument presented by Patentee because
it is not a matter that is subject to appeal to the Board.
Patentee next focuses on the three steps set forth in MPEP § 1412.02
II addressing the recapture of previously surrendered claim language
discussed above and which were also addressed by the Examiner. See
Appeal Br. 8–20; Non-Final Act. 4–9.
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With respect to the first step of the recapture analysis, Patentee argues
that “the Office has failed to set forth ‘whether, and in what respect’
[Reissue] claims 1 and 15 of the present reissue application are ‘broader in
scope than the original patent claims.’” Appeal Br. 9 (emphasis omitted)
(quoting MPEP § 1412.02 II).
We disagree with Patentee that the Office has failed in this endeavor.
This is because the Examiner explained that Reissue Claims 1 and 15 of the
reissue application are broader, in at least one aspect, than the Patented
Claims because they omit the language “the at least one substrate layer
including a first substrate layer and a second substrate layer arranged
adjacent the first substrate layer” and also “no intermediate substrate layer
disposed between the first and second substrate layers” present in all the
Patented Claims. Non-Final Act. 5–6; see id. at 6 (“As there is no more
reference to the substrate layers and the relationship between them, the claim
has been broadened with respect to these features.”); see also Reissue
Claims 1 and 15 above. Patentee does not explain how the omission of
claim language is not a broadening under the above guidelines.
In Patentee’s Reply Brief, and challenging the Examiner’s analysis
above, Patentee argues, “[t]he Office has not articulated its analysis of the
scope of the relevant claims. Rather, it has noted claim language
differences.” Reply Br. 2. Patentee bases this assertion on the Examiner’s
statement:
Based on the disclosure and the drawings, the scope of the
[Reissue] claims has been changed from the relationship
between layers 30 (the first substrate layer) and 32 (the second
substrate layer) to the relationship between the various portions
14 (each being an abrasive element) as seen in Figure 1.
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Reply Br. 2 (citing Non-Final Act. 6; see also Ans. 11). Patentee contends
“‘relationship’ is not recited in the original or pending claims.” Reply Br. 2;
see also id. at 3. However, a reading of the above statement by the
Examiner provides no indication that the term “relationship” is recited in
Reissue Claim 1. Instead, after the Examiner’s comparison of Patented
Claim 1 and Reissue Claim 1 (see Appeal Br. 22–25 (Claims Appendix)),
the Examiner concluded that the thrust of the Reissue Claims now focuses
on “two adjacent abrasive elements” 14 rather than adjacent “first and
second substrate layers” (30, 32) of a single abrasive element 14, as recited
in Patented Claim 18. See Non-Final Act. 6; Ans. 11. Further, the above
noted statement was employed by the Examiner to explain how Reissue
Claim 1 is “broader in scope than the original patent claims” (MPEP §
1412.02 II) because the language which addressed the first and second
substrate layers is now deleted in favor of a new limitation directed to “two
adjacent abrasive elements.” See Appeal Br. 22. In view of such discussion
by the Examiner, Patentee’s contention that “[t]he Office has not articulated
its analysis of the scope of the relevant claims” (Reply Br. 2) is not
persuasive.4
With respect to the second step of the recapture analysis, the thrust of
Patentee’s argument is that, regarding the distinctions made by the Examiner
between Original Claim 7 and Original Claim 8, “Applicant merely accepted
allowable material – which the Office has miscast as a surrender.” Appeal
Br. 10; see also id. at 12 (“Applicant surrendered no subject matter by

4 The Examiner states, “[t]he fact that appellant disagrees with the analysis
does not mean that the analysis has not been done.” Ans. 15.
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simply accepting allowable subject matter.”), 15 (“Applicant simply
accepted subject matter that was considered allowable in the first instance.”);
Reply Br. 4 (“merely accepting subject matter indicated as allowable
provides no basis for surrender”). In other words, “[e]quating the
acceptance of subject matter with surrender – without substantive analysis –
is wrong on its face.” Appeal Br. 10. Further, “[w]ithout surrender, there is
no recapture.” Reply Br. 5. Thus, Patentee contends, “[t]he Office has not
positively determined what may have been surrendered in the prosecution of
the original patent – it has just concluded so because of an amendment.”
Appeal Br. 10; see also Tr. 3:18–4:14.
First, Patentee’s statement that the Examiner has not “positively
determined what may have been surrendered” (Appeal Br. 10) during
prosecution is incorrect. This is because the Examiner has specifically
identified certain passages in Original Claim 8 that were subsequently
incorporated into Amended Claim 7, and which can also be found in both
New and Amended Claim 18 (which matured into Patented Claim 1 of
Palushaj ’144). See Non-Final Act. 5–6; Ans. 11. Patentee acknowledges
this. See Appeal Br. 14.
Second, Patentee’s argument that no surrender of this language
occurred but, instead, the Examiner “just concluded so because of an
amendment” (Appeal Br. 10) is contrary to current case law. It is well
known that arguments presented by Patentee can be employed as evidence
of surrender. See Hester, 142 F.3d at 1481 (Fed. Cir. 1998) (citations
omitted) (“Arguments made to overcome prior art can equally evidence an
admission sufficient to give rise to a finding of surrender.”). In the matter
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before us, Patentee specifically remarked, “The rejection is respectfully
traversed with respect to [Original] claim[s] 7, 11 and 12. [Original] Claim
7 has been amended to include the recitations of allowable [Original] claim
8.” Patentee’s Amendment dated January 6, 2011, 6. As a consequence,
[Original] claim 7 “has been rewritten to include the recitations of allowable
[Original] claim 8.” Id. Furthermore, we have been instructed that a claim
amendment may serve to establish surrender. See Hester, 142 F.3d at 1481
(“Amendment of a claim is not the only permissible predicate for
establishing a surrender.”); see also Youman, 679 F.3d at 1343 (“The
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.”).
Thus, Patentee’s contention that “Applicant did not ‘argue’ that the
incorporation of allowable subject matter overcame the prior art” (Appeal
Br. 11), but remained silent instead, does not, even if true, wholly shield
Patentee from a finding that there was claim surrender.
This understanding is further buttressed because the Hester decision,
when addressing a specific passage in In re Clement, 131 F.3d 1464 (Fed.
Cir. 1997) stated, “[t]his statement in Clement indicates that a surrender can
occur by way of arguments or claim changes made during the prosecution of
the original patent application” (italics in original).5 Hester, 142 F.3d at
1480–81 (referencing Clement, 131 F.3d at 1469). Thus, there are other
non-argument methods (i.e., overt actions) by which it can be ascertained if

5 The Examiner also references Clement stating “where allowable subject
matter was put into independent form, recapture applies.” Ans. 12.
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a surrender occurred, i.e., “arguments or claim changes.” Hester, 142 F.3d
at 1480. “In this regard, claim amendments are relevant because an
amendment to overcome a prior art rejection evidences an admission that the
claim was not patentable.” Hester, 142 F.3d at 1481 (citations omitted); see
also Youman, 679 F.3d at 1343 (“that the patentee intentionally surrendered
during the original prosecution”). See also Ex parte Stefan Deferme, 2016
WL 4395860 (PTAB 2016).
In the matter before us, it is abundantly clear that the limitations of
Original Claim 7 alone were rejected as anticipated. See Non-Final Office
Action dated September 30, 2010, 2. However, the Examiner stated (as
indicated above), that the limitations of dependent Original Claim 8 “would
be allowable if rewritten in independent form” including the limitations of
Original Claim 7. Non-Final Office Action dated September 30, 2010, 5.
Rather than argue the merits of the anticipation rejection, Patentee
acquiesced and rewrote Original Claim 7 stating (and as also expressed
above), “[i]ndependent [Original] claim 7, from which allowable [Original]
claim 8 directly depends, has been rewritten to include the recitations of
allowable [Original] claim 8. [Original] Claim 8 has accordingly been
cancelled.” Patentee’s Amendment dated January 6, 2011, 6. Thus, such
overt amendment by Patentee is indicative of an intent on the part of
Patentee to amend the pending claims so as to achieve the allowability of
Amended Claim 7 based on the limitations recited in Original Claim 8 that
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were only objected to.6 See Ball Corp. v. U.S., 729 F.2d 1429, 1436 (Fed.
Cir. 1984) (“Rarely is evidence of the patentee’s intent in canceling a claim
presented. Thus, the court may draw inferences from changes in claim
scope when other reliable evidence of the patentee’s intent is not
available.”); Haliczer v. U.S., 356 F.2d 541 (Ct. Cl. 1966) (acquiescence in
the rejection and acceptance of a patent whose claims include the limitation
added by the applicant to distinguish the claims from the prior art shows
intentional withdrawal of subject matter).
Furthermore, in the matter before us, the Examiner has specifically
identified the Original Claim 8 limitations as being the basis for the
recapture rejection of Patentee’s presently pending claims. See Non-Final
Act. 4–6; Ans. 11; Claims Appendix. Thus, Patentee’s premise above, that
“Applicant merely accepted allowable material – which the Office has
miscast as a surrender” (Appeal Br. 10), does not establish persuasively that
the Examiner erred in finding that surrender did, indeed, occur.
It is clear that Patentee rewrote Original claim 7 “in order to overcome
prior art and obtain a valid patent.” Youman, 679 F.3d at 1343. This is
confirmed by Patentee stating, “Applicant respectfully traverses the
foregoing [i.e., anticipation] rejection” and that Original “Claim 7 has been
amended to include the recitations of allowable claim 8.” Patentee’s
Amendment dated January 6, 2011, 6. To be abundantly clear, and as
expressed by Patentee, the only “traverse” of the anticipation rejection is that

6 Patentee contends “[f]inding surrender requires finding an intent to
surrender.” Appeal Br. 14; see also Youman, 679 F.3d at 1343 (“that the
patentee intentionally surrendered”).
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“[i]ndependent [Original] claim 7, from which allowable [Original] claim 8
directly depends, has been rewritten to include the recitations of allowable
claim 8.” Patentee’s Amendment dated January 6, 2011, 6.
However, we have been instructed that an amendment gives “rise to a
presumptive estoppel.” Honeywell Int’l Inc. v. Hamilton Sundstrand Corp.,
370 F.3d 1131, 1140 (Fed. Cir. 2004).7 Due to the creation of this
“presumptive estoppel,” it behooves Patentee to show otherwise, i.e., to
show Examiner error on this point. Patentee’s attempts at doing so (see
above), do not establish persuasively that the Examiner erred in finding
claim surrender as discussed. This is especially the case in view of guidance
that “[a] patentee who narrows a claim as a condition for obtaining a patent
disavows his claim to the broader subject matter, whether the amendment
was made to avoid the prior art or to comply with § 112.” Honeywell, 370
F.3d at 1142.
Moreover, as to Patentee’s argument that independent Reissue Claims
1 and 15 are “materially narrow” in accordance with the third step of the
recapture analysis, we are not persuaded of error by the Examiner on this
point as well. Appeal Br. 17. Patentee seeks to explain,
the ‘key limitation’ is among what remains, [so] the pending
[Reissue] claims are at least ‘materially narrowed.’ The
pending [Reissue] claims recite ‘at least two abrasive elements
being separated from one another such that adjacent abrasive
elements . . . do not contact one another.’ Thus, the ‘spacing’

7 We also cannot help but notice the strong similarity between the facts
outlined in the Honeywell case and those presently before us. However, one
difference is Patentee’s addition in the present matter of New Claim 18
(which included the Original Claim 8 limitations) which ultimately matured
into Patented Claim 1 of Palushaj ’144.
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feature of original claim 8, relative to the Gilles reference,
remains.
Reply Br. 5.
However, Patentee does not explain persuasively how expunging
Original Claim 8 limitations results, instead, in a “materially narrow”
Reissue Claim 1 such that “the surrendered subject matter has crept into the
reissue claim.” Youman, 679 F.3d at 1344. We have been instructed that
“[p]roperly applied, the material narrowing must relate to the surrendered
subject matter to prevent the recapture rule from applying.” Youman, 679
F.3d at 1347 (citing Mostafazadeh, 643 F.3d at 1359); see also id. at 1347–
48 (citing North American Container, Inc. v. Plastipak Packaging, Inc., 415
F.3d 1335, 1350 (Fed. Cir. 2005) (“If the narrowing is unrelated to the
surrendered subject matter, it is irrelevant for the purposes of the analysis
even if it renders the reissue claim as a whole intermediate in scope relative
to the patented and original claims.”). Here, Patentee does not establish how
the new recitation of “at least two abrasive elements being separated from
one another” is related to the Original Claim 8 language of first and second
substrates arranged with “no intermediate substrate layer disposed between
the first and second substrate layers.” See Appeal Br. 18 (emphasis added).
Patentee also challenges the Examiner’s correlation of “layers 30 (the
first substrate layer) and 32 (the second substrate layer)” made in respect to
Figure 1 of Palushaj ’144. See Reply Br. 2; Non-Final Act. 6; Ans. 11.
Patentee prefaces this challenge stating, “the original claims at issue only
recite first and second substrate layers – and a backing layer is only
introduced and recited in other dependent claims to the claims at issue (see
claims 11-14 of the [’]144 patent).” Reply Br. 2; see also id. at 3, 4.
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Patentee thus concludes that because dependent claims 11–14 of Palushaj
’144 recite a “backing layer,” Palushaj ’144’s “backing layer” 32 cannot also
serve as the second substrate layer recited in independent claim 1 of Palushaj
’144, as per the Examiner’s correlation above. See Reply Br. 2–4.
We note, however, that Figure 3 of Palushaj ’144 provides a side view
of abrasive element assembly 14 depicting three layers, i.e., layer 32
sandwiched between substrate layer 30 and canted section 52 of bracket 34.
In view of this illustration, it is not clear how the Examiner may have erred
in correlating intermediate layer 32 to the recited “second substrate layer”
despite dependent claims further reciting a third “backing layer.” In other
words, Patentee fails to explain persuasively why the Examiner is precluded
from equating Patentee’s item 32 to the recited “second substrate layer”
simply because Patentee, instead, identifies item 32 as a “backing layer.”
This is especially the case when Patentee’s Specification describes the third
layer 52 as providing the underlying support for items 30 and 32. See
Palushaj ’144 4:51–65 (“[t]he substrate layer 30 and backing layer 32 may
be affixed to bracket 34 . . . to securely clamp the two layers 30 and 32
together and secure them to the depending canted section 52”). In other
words, Patentee does not establish why the above correlation by the
Examiner is faulty in view of the express teachings of Palushaj ’144.
Accordingly, in view of the record presented, we are not persuaded
the Examiner erred in finding that pending claims 1–4 and 6–19 seek to
recapture subject matter that was previously surrendered.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
Appeal 2020-003920
Reissue Application 14/062,550
Patent 8,043,144 B2

18
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–19 251 Improper
Recapture of
Surrendered
Subject Matter
1–4, 6–19
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED