Ex Parte Cretti

Board of Patent Appeals and Interferences

Jan 19, 2012

10681354 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PIERO CRETTI
____________

Appeal 2012-002604
Application 10/681,354
Patent US 6,298,622 B1
Technology Center 3600
____________

Before LINDA E. HORNER, KEN B. BARRETT, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Piero Cretti (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claim 90 in reissue application 10/681,354.
The Examiner rejected claim 90 under 35 U.S.C. § 251 as based on a
defective reissue declaration because claim 90 was added in an amendment
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filed outside the two-year broadening window. This reissue application
seeks to reissue U.S. Patent 6,298,622 B1, issued October 9, 2001, based on
Application 09/425,165, filed October 22, 1999. The Examiner withdrew all
rejections of claim 1-89. Ans. 4-5.1 We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
THE INVENTION
Appellant’s claimed invention “relates, in a general aspect thereof, to
a self-supporting construction element of expanded plastics material, in
particular for manufacturing floor elements and walls of buildings in
general.” ‘622 Patent, col. 1, ll. 13-16. Claim 90 is reproduced below.
90. A construction assembly comprising:
a plurality of elements of expanded plastics arranged
side-by-side, said element including:
a) a central body, substantially parallelepipedic in
shape, provided with opposite upper and lower faces and
with opposite lateral sides;
b) at least one reinforcing section bar embedded in
the expanded plastics;
c) a sheet-like member for supporting at least one
layer of a suitable covering material, said sheet-like
member being associated to a fin of said reinforcing
section bar;
a concrete casting housed in a cavity defined between
said opposite lateral sides of adjacent element of said plurality
of elements of expanded plastics; and
means for stably anchoring the sheet-like member to said
concrete casting.

1 The Examiner stated that “only claim 90 is rejected under 35 U.S.C. § 251”
and that “[t]he indication of claims 1-90 as rejected was a typographical
error” and “the rejection of claims 1-89 under 35 U.S.C. § 251 is being
withdrawn given the Federal Circuit’s decision in In re Tanaka.” Ans. 4-5.
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CONTENTIONS AND ISSUE
The Examiner finds that the original reissue application declaration
shows Appellant’s intention “to get coverage (in new independent claims 66
and 75) on the unclaimed rigid covering element, the rigid covering element
already covered by the claimed generic ‘sheet-like member’ of independent
claims 27 and 42, respectively.” Ans. 6. Thus, the Examiner’s position is
that Appellant’s intention indicated in the original reissue declaration was
not to broaden the claims, but to claim in the reissue an unclaimed species
which was already encompassed by the patented claims. Id.
Appellant acknowledges that “[t]he key inquiry is whether the original
reissue application was a broadening reissue.” Br. 13. Appellant argues that
the original reissue application “provided the required notice to the public
that Applicant intended to broaden the claims.” Br. 14 (citing portions of
original reissue declaration in which Appellant characterized the newly-
added reissue claims as providing protection for an alternative embodiment
having a rigid covering element that was not covered by the ‘622 patent).
Appellant also argues that “the unequivocal intent to broaden in the original
reissue declaration was previously acknowledged by the Examiner in the
March 27, 2009 Supplemental Office Action” in which “the Examiner
rejected claims 66-89 under 35 U.S.C. § 251 as ‘being broadened in a
reissue application.’” Br. 15.
The issue presented by this appeal is:
Did Appellant unequivocally indicate in the reissue application an
intention to broaden within two years from the grant of the original patent?
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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellant filed reissue application 10/681,354 on October 9, 2003,
seeking to add reissue claims 66-89 to U.S. Patent 6,298,622, issued
October 9, 2001. Preliminary Amendment dated October 9, 2003.
2. Appellant concurrently filed a Reissue Application Declaration By the
Inventor (“Original Reissue Decl.”), which stated: “I verily believe
the original patent to be wholly or partly inoperative or invalid . . . by
reason of the patentee claiming more or less than he had the right to
claim in the patent.” Original Reissue Decl. at 1.
3. Appellant further described that after grant of the ‘622 patent:
[T]he inventor realized that the claims of U.S. Patent
6,298,622 recited features which limited the scope of
protection to an extent narrower than was previously
assumed without having a full knowledge of the self-
supporting construction elements which could be marketed
in the U.S..
In this particular market, in fact, the current industrial
practice requires that the expanded plastics material be
finished with a rigid covering element rather than a sheet-
like member for supporting at least one layer of a suitable
covering material as it happens in the European market.
A deeper analysis of the matter reveled that, notwithstanding
what the inventor had understood the patent claims were
drafted from the outset, that is, in the original Italian
application, in such a way that an alternative embodiment of
the self-supporting construction element and of the
construction assembly of the invention, in which the sheet-
like member for supporting at least one layer of a suitable
covering material was replaced by a rigid covering element,
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was not covered even though it was clearly described in the
specification.
The primary error with respect to U.S. Patent 6,298,622,
which has the object of devising self-supporting construction
elements of expanded plastics material and construction
assemblies including the same capable of improving their
resistance to fire and to aging phenomena, resides in the fact
that each of independent claims 27, 42 and 55 is unduly
limited in view of the prior art and fails to provide a
protection for the aforementioned alternative embodiment of
the invention as disclosed in the patent.
It has in fact be determined that the aforementioned object
may be achieved in a new and unobvious way by a self-
supporting construction element and by a construction
assembly which do not necessarily include the sheet-like
member for supporting at least one layer of a suitable
covering material as currently recited in granted claims 27,
42 and 55, but which include, instead, a rigid covering
element as was clearly described in the patent.
Original Reissue Decl. at 2.
4. The Examiner rejected reissue claims 66-89 as violating the rule
against recapture based on the determination that the claims are
broader in scope than the original claims. Supplemental Office
Action dated Mar. 27, 2009 at 4-5.
5. Appellant argued that reissue claim 66 is not missing the claim
limitation identified by the Examiner when compared to patent claim
27 and that the only difference between reissue claims 75 and 84, and
patent claims 42 and 55, respectively, is the substitution of a rigid
covering element for the sheet-like member. Response to Office
Action dated Aug. 24, 2009 at 19, 21-24. As to this difference,
Appellant argued that “the rigid covering element can be considered a
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species of the genus ‘sheet-like member’ since the claimed rigid
covering element is still adapted to support a suitable covering
material such as a layer of plaster.” Id. at 22, 24. Thus, Appellant
asserted that claims 75 and 84 may be “interpreted to have a scope
which is narrower than or at best equal to that of granted claim[s 42
and 55, respectively], as far as this aspect is concerned.” Id.2
6. The Examiner withdrew the recapture rejection and rejected claims
1-89 under 35 U.S.C. § 251 based upon a defective reissue declaration
because the reissue application added only claims that were narrower
than the patent claims without either narrowing a broader patent claim
by amendment or canceling a broader patent claim. Thus the
Examiner determined that the reissue application did not present an
error correctible by reissue. Second Office Action dated Oct. 27,
2009 at 2-3 (citing MPEP § 1402).
7. In response to the Second Office Action, Appellant amended the
claims to add new reissue claim 90 and submitted a Supplemental
Reissue Declaration identifying the error as claiming less than
Appellant had a right to claim in the patent. Response to Second
Office Action dated Feb. 26, 2010 at 20 (stating that “new claim 90 is
broader than issued claim 42”).
8. The Examiner then rejected claims 1-903 under 35 U.S.C. § 251,
fourth paragraph, as defective because the reissue application is a

2 Reissue claim 66 also replaces the “sheet-like member” limitation of patent
claim 27 with a “rigid covering element.”
3 In the Answer the Examiner clarified that inclusion of claims 1-89 was a
typographical error. Ans. 3.
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broadening reissue filed outside the two year statutory period. Third
Office Action dated Apr. 13, 2010 at 2.4
9. Appellant then timely appealed the Examiner’s decision to this Board.
Notice of Appeal dated Oct. 13, 2010.
10. Reissue claims 66, 75, and 84 differ from patented claims 27, 42, and
55, respectively, in the substitution of “a rigid covering element” for
“a sheet-like member for supporting at least one layer of a suitable
covering material.” Id. at 20, 21, 23 (showing claim charts comparing
reissue claims 66, 75, and 84 to patented claims 27, 42, and 55).5
11. The Specification describes three embodiments of the invention. A
first embodiment is a construction element for constructing floors
having a single lath for supporting at least one covering layer. ‘622
patent, col. 4, ll. 45-46; col. 7, ll. 1-2; col. 8, ll. 34-37; figs. 1 and 2. A
second embodiment is a wall element having a pair of laths each
adapted to support a respective covering layer. ‘622 patent, col. 4,
ll. 61-64; col. 9, ll. 37-40; fig. 3. A third embodiment is a wall
element having “instead of the second lath for supporting the covering

4 The third Office Action does not repeat the rejection of claims 1-89 under
35 U.S.C. § 251 as failing to present an error correctible by reissue. It
appears, however, that this rejection was outstanding at the time of appeal;
and the Examiner withdrew the rejection in the Answer. Ans. 3.
5 “A claim in the reissue which includes subject matter not covered by the
patent claims enlarges the scope of the patent claims. For example, if any
amended or newly added claim in the reissue contains within its scope any
conceivable product or process which would not have infringed the patent,
then that reissue claim would be broader than the patent claims.” MPEP
§ 1412.03(I) (citing Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2
(Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730 (CCPA 1960); In re Rogoff,
261 F.2d 601, 603 (CCPA 1958)).
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layer–a rigid covering element associated to the reinforcing section
bar on the face opposite to that having the first lath.” ‘622 patent,
col. 5, ll. 3-7; fig. 4. See also ‘622 patent, col. 9, ll. 41-45 (describing
the rigid covering element as “a panel 22 of gypsum paperboard,
wood, rigid plastics, or another suitable material for decorative and/or
structural purposes.”).
12. Figure 4 shows the rigid covering element as a sheet-like panel 22.
13. The Specification describes:
In the following description and the subsequent claims, the
terms: lath for supporting at least one covering layer,
encompass not only conventional mesh – either smooth or
provided with protruding ribs – obtained by stretching a
suitably notched metal sheet, but also any sheet-like member
adapted to support a suitable covering material.
‘622 patent, col. 2, ll. 20-25.
14. Thus, the Specification defines “lath for supporting at least one
covering layer” as meaning “any sheet-like member adapted to
support a suitable covering material.”
15. The Specification distinguishes between a “lath” and a “rigid covering
element.” In particular, in the third embodiment, the “lath” or “sheet-
like member” for supporting at least one covering layer is replaced
with “a rigid covering element” thereby eliminating the lath or sheet-
like member for supporting at least one covering layer altogether.
16. An ordinary meaning of “sheet” is “a broad, relatively thin, usually
rectangular mass or piece of material, such as paper, metal, glass, or
plywood.” THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
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LANGUAGE (2007), available at http://www.credoreference.com/
entry/hmdictenglang/sheet1.
PRINCIPLES OF LAW
35 U.S.C. § 251, fourth paragraph, provides, “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.”
The court in In re Fotland, 779 F.2d 31, 34 (Fed. Cir. 1985) held that
a “no defect” reissue application filed within two years of the patent grant
that did not assert broadened claims or allege a defect in the patent within
two years from the date of grant of the original patent could not be relied
upon to later file the requisite declaration and broadened claims outside the
two year window. The court subsequently held that “the reissue statute
requires that proposals to broaden a patented invention must be brought to
public notice within two years of patent issuance.” In re Graff, 111 F.3d
874, 877 (Fed. Cir. 1997) (distinguishing In re Doll, 419 F.2d 925 (CCPA
1970) which “simply held that the reissue applicant, in the course of
prosecution of the reissued application, was not barred from making further
broadening changes in the claims” when the public was placed on notice of
the patentee’s intention to enlarge the claims within the two year statutory
period). The court in Graff relied on Fotland to support its interpretation of
35 U.S.C. § 251, fourth paragraph. Id. The court in Graff stated that “[t]he
reissue statute balances the purpose of providing the patentee with an
opportunity to correct errors of inadequate claim scope, with the public
interest in finality and certainty of patent rights.” Id. (citation omitted).
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ANALYSIS
Appellant argues that the Examiner erred in rejecting reissue claim 90
because under the holding in Doll, Appellant should be allowed to add a
broadened claim outside the two year window because he put the public on
notice of his intention to broaden the claims in the original reissue
declaration, filed exactly two years from the date of the patent grant.6 The
Examiner’s position is that the holding in Graff applies to this case because
Appellant did not put the public on notice of his intention to broaden the
claims until the filing of new claim 90 and the accompanying Supplemental
Reissue Declaration more than two years from the date of the patent grant.
During prosecution of the reissue application, Appellant inconsistently
characterized the reissue claims 66-89 as both broadening and narrowing the
subject matter covered by the patented claims (Facts 2, 3, 5). Likewise, the
Examiner took inconsistent positions as to whether claims 66-89 are
broadening or narrowing (Facts 4, 6, 8). We decline in this case to rely
simply on Appellant’s characterizations of the scope of the reissue claims in
the Original Reissue Declaration to determine what the public would have
understood to be Appellant’s intention at the time of filing the reissue
application. We find, based on the wording of reissue claims 66-89 and
based on statements made in the Original Reissue Declaration both filed
concurrently within the two year window, that at the time of filing of the
reissue application, Appellant put the public on notice of his intention to
present new reissue claims that replaced “a sheet-like member for supporting

6 “A reissue application filed on the 2-year anniversary date from the patent
grant is considered to be filed within 2 years of the patent grant.” MPEP
§ 1412.03(IV).
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at least one layer of a suitable covering material” with “a rigid covering
element” (Facts 3, 10). In light of this clear intention, we decide whether in
fact reissue claims 66-89 are broader or narrower than the original patented
claims, so as to determine whether the public was put on notice of an
intention to broaden the patent claims within the two year window.
While in some instances a “rigid covering element” such as a panel of
gypsum paperboard might be “sheet-like” in form, in other instances a rigid
covering element may not necessarily take the form of a “sheet-like
member” (Fact 16). The third embodiment of the Specification replaces the
lath, or sheet-like member, with a rigid covering element and thus
distinguishes between a lath or sheet-like member for supporting a covering
layer and a rigid covering element (Facts 11, 13-15). While the rigid
covering element is depicted in Figure 4 as a sheet-like panel 22 (Fact 12),
the claimed “rigid covering element” is not limited to the preferred
embodiment, and the Specification describes that the rigid covering element
can include “wood, rigid plastics, or another suitable material for decorative
and/or structural purposes” (Fact 11). Thus, under a broadest reasonable
interpretation, a “rigid covering element” may be “sheet-like” or may be
comprised of rigid material of a non-sheet-like configuration. For example,
the rigid covering element could include a rigid plastic molded or formed to
a shape that is not relatively thin or “sheet-like.” Alternatively, the rigid
covering element could include wooden 2x4s that are not relatively thin or
“sheet-like.” As such, independent reissue claims 66, 75, and 84, are
broader than original patent claims 27, 45, and 55, respectively, in the aspect
of the “rigid covering element” in that these new reissue claims would read
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on a construction element having a rigid covering element that is not in the
form of a “sheet-like” structure. In other words, reissue claims 66, 75, and
84 contain within their scope a product which would not have infringed the
patent, and these reissue claims are thus broader than the patent claims in
this aspect. Appellant’s presentation of reissue claims 66, 75, and 84, in
combination with the filing of the Original Reissue Declaration describing
this amendment to the claim scope, within the two year window adequately
put the public on notice of Appellant’s unequivocal intention to broaden the
patent claims by reissue. As such, under the holding in Doll, Appellant is
permitted to add broadened claim 90 outside the two year window. For
these reasons, we do not sustain the Examiner’s rejection of claim 90 under
35 U.S.C. § 251, fourth paragraph.
CONCLUSION
Appellant unequivocally indicated in the reissue application an
intention to broaden within two years from the grant of the original patent.
DECISION
The decision of the Examiner to reject claim 90 is REVERSED.

REVERSED

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