Ex Parte Dreiling

Board of Patent Appeals and Interferences

Nov 18, 2010

10795143 (B.P.A.I. Nov. 18, 2010)

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.
10/795,143 03/04/2004 David L. Dreiling 16763US01 1641
23446 7590 11/19/2010
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
NELSON JR, MILTON
ART UNIT PAPER NUMBER
3636
MAIL DATE DELIVERY MODE
11/19/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID L. DREILING
____________________

Appeal 2010-012416
Application 10/795,143
Patent 6,352,306 B1
Technology Center 3600
____________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-012416
Application 10/795,143
Patent 6,352,306 B1

2
STATEMENT OF THE CASE
David L. Dreiling (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 10-27, 29, and 30 in reissue
application 10/795,143, filed March 4, 2004. Claims 1-9 have been allowed
by the Examiner, and claims 28 and 31-33 have been canceled. The reissue
application seeks to reissue U.S. Patent 6,352,306 B1 (“the ‘306 patent”),
issued March 5, 2002, based on application 09/620,834, filed July 21, 2000.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Claim 10, reproduced below, is representative of the subject matter on
appeal.
10. A seat for semi-permanent attachment to a stadium bench
supported on a stadium riser, wherein the stadium bench
presents a top, flat surface for seating, a front portion that
extends beyond the stadium riser, opposed, spaced front and
rear vertical walls extending downwardly from the top surface,
and flanges extending inwardly from the bottom of each wall,
said seat comprising:
a frame having a back and a seat portion;
a cushion connected to the seat portion and normally
supported in a horizontal position
over the stadium bench when the seat is attached to the
stadium bench, the cushion being swingable from said
horizontal position to a vertical position below the seat portion
of the frame so that, when the seat is attached to the stadium
bench and the cushion is in the vertical position, the cushion is
beneath the front portion of the stadium bench; and
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an assembly for semi-permanently attaching the seat to
the stadium bench, said assembly
including at least one clamp shiftably coupled relative to
said frame and being operable to releasably attach the seat to
the stadium bench.

THE REJECTION
Before us for review is the Examiner’s rejection of claims 10-27, 29,
and 30 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.

ISSUE
As stated by our reviewing court in North Am. Container, Inc. v.
Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005), “[u]nder the
recapture rule, a patentee is precluded ‘from regaining the subject matter that
he surrendered in an effort to obtain allowance of the original claims.’”
(citations omitted).
The basis of the Examiner’s rejection is that the subject matter of the
appealed claims of this reissue application is an improper recapture of
broadened claimed subject matter surrendered in the application for patent.
Ans. 3-7. Specifically, the Examiner concluded that the omission in
Appellant’s independent reissue claims of the language “said clamp being
affixed to the rear end of the seat portion of the frame by a bolt, the bolt
being received within a threaded bolt housing on the seat portion of the
frame” constitutes recapture of surrendered subject matter. See id. at 4. The
Examiner maintains that there is improper recapture because, in order to
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gain allowance, a dependent claim reciting an “assembly” and containing the
above-quoted language was rewritten into independent form to incorporate
all of the limitations of the only other independent claim, which was
subsequently cancelled. See id. at 4-5. The rewritten claim issued as claim 1
of the ‘306 patent. App. Br. 37. The Examiner further maintains that the
dependent reissue claims also omit all or some of this language, and
therefore also constitute recapture. Ans. 5, 7.
Appellant argues that the omitted language is merely a portion of the
“‘assembly’ limitation” present in the issued patent claims, and therefore
there is no improper recapture because Appellant has merely broadened, but
has not entirely eliminated, the “‘assembly’ limitation.” App. Br. 31-33.
Appellant argues the rejected claims as a group. See id. at 31. We
select claim 10 as the representative claim, and claims 11-27, 29, and 30
stand or fall with claim 10. 37 C.F.R. § 41.37(c)(1)(vii).
The issue joined in this appeal is whether reissue application claim 10
is directed to subject matter surrendered in the original prosecution of the
patent in an effort to obtain allowance of the original claims. More
specifically, is the presence in reissue application claim 10 of some, but not
all, of the features of the assembly added during the original prosecution to
gain allowance sufficient to avoid violating the recapture rule?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
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Prosecution History of the Original Application
1. During the prosecution of the original application that led to the
issuance of the ‘306 patent, the Examiner rejected all of the pending claims
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention. App. Br., Evid. Appendix, Exh. 8 (Office
Action mailed Oct. 11, 2000) at 2. The Examiner also rejected claims 1-5, 9,
and 10 under 35 U.S.C. § 102(b) as being anticipated by Clute (US
3,066,980, issued Dec. 4, 1962). Id. at 2-3. The Examiner stated that
dependent claim 6 would be allowable if rewritten to include all of the
limitations of claim 1 and if rewritten to overcome the § 112, second
paragraph, issues. See id. at 3.
2. Claim 1, at the time of the October 2000 rejection, recited “[a]
seat … comprising … a frame … and a cushion ….” See App. Br., Evid.
Appendix, Exh. 9 (Amendment of Jan. 11, 2001, responsive to the Office
Action of Oct. 11, 2000) at 1-2 (setting forth the subsequently amended
claim, and indicating changes made by amendment).
3. Claim 6, also at the time of the October 2000 rejection, recited:
A seat as set forth in Claim 1,
the seat including an assembly for semi-permanently attaching
the seat to the stadium bench,
said assembly presenting at least one clamp;
said clamp being operable to releasably attach the seat to the
stadium bench,
said clamp being affixed to the rear end of the seat portion of
the frame by a bolt, the bolt being received within a
threaded bolt housing on the seat portion of the frame.
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See id. at 3 (setting forth the subsequently amended claim, and indicating
changes made by amendment).
4. Figure 2 of Clute, with a portion of the canopy omitted and with
the addition of a circle around lock means 40, is reproduced below:

Figure 2 is a rear perspective view of Clute’s foldable stadium chair. Clute,
col. 1, ll. 7-9, 35-37. Clute’s stadium chair is attached to the bleacher by a
hook means 28 (not shown in the above figure) in the front and a lock means
40, including rotatable L-shaped member 44, in the rear. Id., col. 2, ll. 26-
51; col. 2, l. 72 – col. 3, l. 12; figs. 1-3. While Clute’s L-shaped member 44
might be considered a clamp within the meaning of Appellant’s claimed
invention, the member 44 is not attached to the frame via a bolt and threaded
bolt housing on the seat. See id., col. 2, ll. 41-51; figs. 2, 6.
5. In response to the October 2000 rejection, Appellant amended
claim 6 by rewriting it in independent form and so as to include all of the
limitations of claim 1. See App. Br., Evid. Appendix, Exh. 9 at 3, 5.
Appellant stated:
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The allowable subject matter of Claims 6, 7 and 8 has been
noted. In view thereof, the subject matter of initial Claim l has
been placed in Claim 6, which is now an independent claim
from which amended Claim 7 and Claim 8 depend.
Id. at 5. Appellant continued to prosecute claim 1 in an amended form but
still without language directed to an “assembly.” Id. at 1-2, 4. Appellant
concluded the response by stating:
As is apparent, the claims in this application have been
carefully redrawn to specifically meet the objections of the
Examiner based upon the Clute reference and it is believed that
this application is now in full condition for allowance ….
Id. at 7.
6. In a Final Office Action mailed March 19, 2001, and responsive
to Appellant’s January 2001 amendments, the Examiner maintained the
§ 102 rejection of claims 1-5, 9, and 10, and the § 112, second paragraph,
rejection of all the claims. App. Br., Evid. Appendix, Exh. 10 at 2-3. The
Examiner indicated that claim 6 would be allowable if rewritten or amended
to overcome the § 112, second paragraph, rejection. Id. at 3.
7. In response to the March 2001 final rejection, Appellant
canceled independent claim 1 and amended claim 6 to overcome the § 112,
second paragraph, rejection. App. Br., Evid. Appendix, Exh. 11
(Amendment) at 1, 5, 8-9. Appellant asserted that claim 6, as amended,
should be allowable. Id. at 5.
8. The ‘306 patent issued on March 5, 2002, with the amended
claim 6 as the sole independent claim 1. See App. Br. 37; the ‘306 patent.
Issued claim 1, as later corrected by a Certificate of Correction, recites a
frame, a cushion, and:
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an assembly for semi-permanently attaching the seat to the
stadium bench, said assembly presenting at least one clamp,
said clamp being operable to releasably attach the seat to the
stadium bench, said clamp being affixed to the rear end of the
seat portion of the frame by a bolt, the bolt being received
within a threaded bolt housing on the seat portion of the frame.
9. Appellant agrees that the “assembly” requirement of issued
claim 1 includes a clamp, a bolt, a threaded bolt housing, and a particular
location for affixing the clamp to the frame. See App. Br. 34, 39 (referring
to the elements of the “narrow assembly requirement” of the issued claims),
41.
Reissue Application
10. Appellant seeks reissue claims directed at a seat having a frame,
a cushion, and an assembly including at least one clamp. See, e.g., reissue
claims 10, 22; see also App. Br. 38-39; but see independent reissue claim 29
(reciting an assembly including “at least one attachment mechanism”).
Claim 10, in particular, recites a frame, a cushion, and:
an assembly for semi-permanently attaching the seat to
the stadium bench, said assembly
including at least one clamp shiftably coupled relative to
said frame and being operable to releasably attach the seat to
the stadium bench.
App. Br., Claims Appendix.
11. Appellant concedes that the “assembly” of the reissue claims is
broader than that of the issued claims “because the reissue claims do not
require a particular location for affixing the clamp to the frame, a bolt, or a
threaded housing on the frame.” App. Br. 38; see also id. at 48.

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ANALYSIS
Application of the recapture rule is a three-step process:
(1) first, we determine whether, and in what respect, the reissue
claims are broader in scope than the original patent claims; (2)
next, we determine whether the broader aspects of the reissue
claims relate to subject matter surrendered in the original
prosecution; and (3) finally, we determine whether the reissue
claims were materially narrowed in other respects, so that the
claims may not have been enlarged, and hence avoid the
recapture rule.
North Am. Container, 415 F.3d at 1349.
Step 1:
Appellant concedes that reissue application claim 10 is broader than
issued patent claim 1 with respect to the “assembly.” Fact 11; App. Br. 48.
We now address Appellant’s characterization of the broader subject
matter. In attempting to analogize the facts in this case to those of In re
Eggert, 67 USPQ2d 1716 (BPAI 2003), Appellant contends that the reissue
claims merely broaden the single “assembly limitation” rather than omitting
it entirely. See, e.g., App. Br. 31, 47. Appellant argues that North American
Container, which the Examiner cites in support of the rejection (see, e.g.,
Ans. 12-13), is factually distinguishable because that case involved the
elimination in its entirety of a limitation added to gain allowability. See
App. Br. 46-47, 53.
We disagree with Appellant’s assertion that, in this case, no narrowing
limitation has been omitted and that the “assembly” is a single limitation in
the patent claims. Appellant takes an overly simplified view of the claims.
In the context of Appellant’s issued patent claim 1 and reissue claim 10, “an
assembly for semi-permanently attaching the seat to the stadium bench”
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does not connote sufficiently definite structure to one of ordinary skill in the
art. 2 In other words, the term “assembly” standing alone does not define the
claimed structure without some further identification of the individual
structures that comprise that “assembly.”
During the prosecution of the original application and in order to
obtain allowance, Appellant canceled the original claim 1 – reciting a seat
comprising a frame and a cushion – in favor of dependent claim 6 rewritten
in independent form to include the limitations of the original claim 1 plus the
subject matter of claim 6. Facts 1-7. In so doing, Appellant did not simply
add “an assembly” to the frame and cushion, but rather added the
components comprising the assembly as well as the relative locations of
those components. Specifically, Appellant further limited the subject matter
of the original independent claim by the addition of: a) at least one clamp;
b) a bolt; c) a threaded housing specifically located on the seat portion of the
frame; and d) the requirement that the clamp be affixed to the rear end of the
seat portion of the frame. See Facts 3, 8, and 9. Accordingly, we conclude
that Appellant added several structural limitations by amendment, not a
single “assembly” limitation, in order to gain allowance over Clute.
In contrast to the issued independent claim 1, the assembly of reissue
claim 10 merely requires “at least one clamp shiftably coupled relative to
said frame and being operable to releasably attach the seat to the stadium
bench.” Thus, Appellant has broadened the reissue claim relative to the

2 We need not and do not reach the issue as to whether the term “assembly”
could be understood to define specific structure in the context of another
patent application or in another field of endeavor.
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issued claim by the omission of several narrowing structural limitations.
The broadened subject matter includes at least the omitted requirements of a
bolt, a threaded housing, and a specific location for the clamp.
Step 2:
As discussed above, Appellant added the limitations of claim 6,
including those structures defining the “assembly,” to the subject matter of
rejected claim 1 so as to obtain allowance. See Facts 2, 3, 5. Appellant’s
efforts to overcome the rejection of independent claim 1 as anticipated by
Clute without including the assembly structures of the dependent claim 6
were unavailing. See Facts 5-7. Appellant, while again attempting to
analogize the facts of this case to Eggert, concedes that the requirement that
the seat have an assembly is the aspect that led to patentability. Reply Br. 3
(“Just like the reissue claims at issue in Eggert, the reissue claims at issue
here are broader in scope than the issued patent claims, but narrower than
cancelled original claim in the aspect that led to patentability, i.e., the
presence of a limitation requiring the claimed seat to have an assembly.”)
By omitting the requirements of a bolt, a threaded housing, and a specific
location for the clamp, Appellant not only broadened the recited “assembly”
aspect but also completely omitted structural limitations added to obtain
allowance. Thus, the broadening aspect of reissue application claim 1
relates to subject matter surrendered in the original prosecution. See North
Am. Container, 415 F.3d at 1350 (describing the omission of the
requirement that the “inner walls” be “generally convex,” which was a
limitation added to the rejected claim by amendment, as “the broader aspect
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of the reissue claims [that] relates to subject matter that was surrendered
during prosecution of the original-filed claims.”)
Step 3:
The assembly component limitations regarding the bolt, threaded
housing, and specific location for the clamp are missing from reissue
application claim 10 and therefore have not been narrowed in any respect
relative to patent claim 1. See North Am. Container, 415 F.3d at 1350
(analysing the third step in terms of the limitation relating to surrendered
subject matter). Additionally, Appellant does not appear to assert that
reissue claim 10 has been materially narrowed in any other respect relative
to the issued claim 1. Accordingly, we conclude that Appellant has not
avoided the recapture rule by materially narrowing claim 10.
Appellant argues that there is no violation of the recapture doctrine
because the assembly aspect “was not eliminated in its entirety, it was
merely broadened.” App. Br. 65-66. However, “the recapture rule is
applied on a limitation-by-limitation basis,” North Am. Container, 415 F.3d
at 1350, and for the reasons set forth above, we conclude that the assembly
aspect added by amendment during the original prosecution is not a single
limitation, but rather several structural limitations. Appellant’s argument
that the assembly aspect was not entirely omitted is irrelevant to the issue of
whether the reissue claims violate the rule against recapture. See id. (stating
“that the reissue claims, looked at as a whole, may be of ‘intermediate
scope’ is irrelevant.”) Appellant’s deletion in their entirety of the bolt,
threaded housing, and clamp location limitations from reissue claim 10
clearly broadened those limitations, thus violating the rule against recapture.
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We sustain the rejection of claim 10, and claims 11-27, 29, and 30,
which fall with claim 10, under 35 U.S.C. § 251.

CONCLUSION
The presence in reissue application claim 10 of some, but not all, of
the features of the assembly added during the original prosecution to gain
allowance is not sufficient to avoid violating the recapture rule.

DECISION
The decision of the Examiner to reject claims 10-27, 29, and 30 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

mls

MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
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