Ex Parte Dinh et al

Patent Trial and Appeal Board

Jul 23, 2013

10061458 (P.T.A.B. Jul. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte LINH A. DINH, LOC X. PHAN, ROBERT EURY,
IRINA POMERANTSEVA, and MICHAEL FROIX
____________________

Appeal 2013-006872
Application 10/061,458
Patent 6,019,789
Technology Center 3700
____________________

Before: LINDA E. HORNER, PHILLIP J. KAUFFMAN,
and PATRICK R. SCANLON, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting reissue claims 16-33 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. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Invention
Appellants’ claimed invention “relates generally to medical devices,
and particularly to a unit cell for use in an expandable endoprosthesis device,
more generally called a stent, and to a stent composed of such unit cells.”
Spec. 1:5-8. Reissue claim 16 is reproduced below:
16. A stent having a plurality of openings therethrough, the
stent comprising a plurality of serpentine circumferential bands,
adjacent serpentine circumferential bands connected one to the
other, the serpentine circumferential bands including first
serpentine circumferential bands of a first shape and second
serpentine circumferential bands of a second shape different
from the first shape, every first serpentine circumferential band
being adjacent to a said second serpentine circumferential band
and every second serpentine circumferential band being
adjacent to a said first serpentine circumferential band, distal
most openings of the stent being at least partially bounded by a
said first serpentine circumferential band and at least partially
bounded by a said second serpentine circumferential band,
proximal most openings of the stent being at least partially
bounded by a said first serpentine circumferential band and at
least partially bounded by a said second serpentine
circumferential band, at least one opening not bounded by a
said second serpentine circumferential band.
Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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PROCEDURAL HISTORY
Appellants filed application 09/053,887 (“original application”), with
claims 1-15, on April 1, 1998. The Examiner rejected claims 1-15 as being
unpatentable over prior art.1 Office Action dated March 18, 1999, at 2-3.
The Examiner withdrew these rejections after Appellants’ response2, and the
original application issued as US 6,019,789 (“Dinh”) with claims 1-15 on
February 1, 2000.
Claims 1-15 were not amended during prosecution of the original
application.
Appellants filed reissue application 10/061,458 on February 1, 2002,
seeking to reissue U.S. Patent 6,019,789.
During the prosecution of the reissue application, the Examiner
allowed reissue claims 1-15, the amended original patent claims. Office
Action dated June 21, 2012, at 1. In that action, the Examiner also rejected
claims 16-33 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. Id. That action is the subject
of this appeal.

OPINION
What has become known as the “recapture rule,” prevents a patentee
from regaining through a reissue patent subject matter that the patentee

1 The Office Action also included an objection to the drawings that is not
relevant to our analysis here.
2 Response to Office Action dated June 10, 1999.
Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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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).
The Federal Circuit's opinion in Clement discusses a three-step test for
analyzing recapture.3
Step 1 involves a determination of whether and in what aspect any
claims sought to be reissued are broader than the patent claims. Clement,
131 F.3d at 1468.
Step 2 involves a determination of whether the broader aspects of the
reissue application claims relate to surrendered subject matter. Id. at 1468-
69.
Step 3 is applied when the broadening relates to surrendered subject
matter and involves a determination whether the surrendered subject matter
has crept into the reissue application claim. Id. at 1468.
Regarding step 1, the Examiner determined that claims 16-33 are
broader in at least one aspect than the patent claims. Ans. 3-4, 7-10.
Specifically, the Examiner determined that reissue claims 16-33 are broader
than the patent claims because six limitations of patent claim 1 were not
included in reissue claims 16-33.4 Ans. 8. Step 2 of the Clement test is
determinative of this appeal.

3 For more recent applications of the three-step test of Clement, see In re
Youman, 679 F.3d 1335 (Fed. Cir. 2012); In re Mostafazadeh, 643 F.3d
1353 (Fed. Cir. 2011); and North Am. Container, Inc. v. Plastipak
Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005).
4 The six limitations identified were: a unit cell, an elongated connecting bar,
first and second arms, attachment between the elongated connecting bar and
the two arms, a loop member, and connection between the expandable loop
member and the two arms. Ans. 8.
Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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As mentioned, supra, step 2 involves a determination of whether the
broader aspects of the reissue application claims relate to surrendered
subject matter. Clement, 131 F.3d at 1468-69. The focus of that
determination is, “‘whether an objective observer viewing the prosecution
history would conclude that the purpose of the patentee's amendment or
argument’ concerning a particular claim was for reasons of patentability, that
is, ‘to overcome prior art and secure the patent.’” Greenliant Systems, Inc.,
v. Xicor LLC, 692 F.3d 1261, 1267 (Fed. Cir. 2012) (quoting Kim v.
ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006)). Further,
where, as here, surrender is alleged to have been through argument without a
claim amendment, “a patentee ‘must clearly and unmistakably argue that his
invention does not cover [that] subject matter to overcome an examiner's
rejection based on prior art.’” Id. at 1267 (quoting MBO Labs., Inc. v.
Becton, Dickinson & Co., 602 F.3d 1306, 1314 (Fed. Cir. 2010)).
In making this determination, we are mindful that the recapture rule
seeks to ensure that the public can rely on a patentee’s admission during
prosecution of an original patent. Yoon Ja Kim v. ConAgra Foods, Inc., 465
F.3d 1312, 1323 (Fed. Cir. 2006) (citations omitted); see also Hester Indus.,
Inc. v. Stein, Inc., 142 F.3d 1472, 1481 (Fed. Cir. 1998) (“[ T]he reissue
statute cannot be construed in such a way that competitors, properly relying
on prosecution history, become patent infringers when they do so.”) (quoting
Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 996 (Fed. Cir. 1993)).
With this guidance in mind, we turn to the Examiner’s analysis of step
2 of the Clement test.
Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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During prosecution of the original application, claims 1-14 were
rejected under 35 U.S.C. § 102 as anticipated by either Al-Saadon5, Klein6,
Lan7, or Orth8, and claim 15 was rejected under 35 U.S.C. § 103 over Al-
Saadon and Phan9. Office Action dated March 18, 1999, at 2-3.
The Examiner determined that by arguing the five limitations of the
original claims during the original prosecution, Appellants surrendered all of
that subject matter. Ans. 10-12; see also Ans. 3-4. Specifically, the
Examiner identifies the following portions of Appellants’ response10 to those
rejections as surrendering subject matter. See Ans. 13-14.
Regarding anticipation by Al-Saadon:
AL-SAADON describes a stent composed of a plurality of
connecting members which are joined are [sic] each end by
elongatable members. A single connecting member with
elongatable members at each end as illustrated in Fig. 1 of Al-
Saadon is depicted in ATTACHMENT 1.

The stent of Al-Saadon does not include the expandable
looped member connecting the first and second arms joined to
the connecting member, as in the present invention.
Ans. 13 (quoting the Response to Office Action dated June 10, 1999, at 4).
Regarding anticipation by Klein:
articulation structure described in Klein, none of the presently
claimed elements other than the connecting bar (beam member)

5 U.S. Patent 5,755,776.
6 U.S. Patent 5,593,442.
7 U.S. Patent 5,514,154.
8 U.S. Patent 5,591,197.
9 U.S. Patent 5,674,242.
10 Referring to Appellants’ June 10, 1999, response to the Office Action
dated March 18, 1999, in the prosecution of the original application.
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US Patent 6,019,789

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are taught. Certainly the arrangement of a central connecting
beam
Ans. 14 (quoting portion of the Response to Office Action dated June 10,
1999, at 5).
Regarding anticipation by Lau:
LAU describes a stent composed of a plurality of
cylindrical elements interconnected by one or more
interconnective elements. The stent of Lau as depicted in Fig. 5
is shown in ATTACHMENT 3. The cylindrical elements are a
serpentine pattern, joined by the interconnective elements.

Clearly, the stent of Lau fails to show an expandable
looped member which joins arm pairs at each end of a
connecting bar, as set forth in the present invention.
Ans. 14 (quoting the Response to Office Action dated June 10, 1999, at 5).
Regarding anticipation by Orth:
These stents, like the Lau stent above, do not have an
expandable looped member which joins arm pairs at each end
of a connecting bar, as set forth in the present invention.
Ans. 14 (quoting the Response to Office Action dated June 10, 1999, at 6).
Regarding the rejection of claim 15 as obvious over Al-Saadon and
Phan, the Examiner did not identify that Appellants’ applied the arguments
concerning anticipation by Al-Saadon to the obviousness rejection; however,
such is the case. See Response to Office Action dated June 10, 1999, at 4
(anticipation), 6-7 (obviousness).
Appellants contend that the arguments identified by the Examiner did
not change claim scope and did not surrender subject matter. App. Br. 14;
Reply Br. 3-4. We agree.
Appeal 2013-006872
Application 10/061,458
US Patent 6,019,789

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Contrary to what the rejection suggests, it is not enough that
Appellants contest the rejection. As Appellants’ correctly point out, a
rejection may be completely erroneous, and such a rejection should not
create surrender. Reply Br. 6-7. The proper inquiry, as explained, supra, is
whether an objective observer would interpret any of Appellants’ arguments
identified by the Examiner as clearly and unmistakably contending that the
claims did not cover certain other subject matter. Here, Appellants asserted
that the references do not disclose the claimed subject matter, but such
general assertions are not a clear and unmistakable contention that certain
subject matter is not covered. None of these arguments, if relied upon by the
public, would have caused that person to become a patent infringer.
Because step 2 has not been met, we need not address step 3.
Accordingly, we do not sustain the rejection of claims 16-33.

DECISION
We reverse the Examiner’s decision to reject claims 16-33.

REVERSED

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