Ex Parte Hasemann

Board of Patent Appeals and Interferences

May 21, 2012

12756814 (B.P.A.I. May. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOERG-MICHAEL HASEMANN
____________________

Appeal 2012-004829
Application 12/756,814
Technology Center 2400
____________________

Before: JOSEPH L. DIXON, HOWARD B. BLANKENSHIP, and
ST. JOHN COURTENAY III, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004829
Application 12/756,814
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
38-78. We have jurisdiction under 35 U.S.C. § 6(b). The present appeal in
this reissue application of US Patent 7,356,593 arises out of a final rejection
of claims 38-78 which were newly presented broadening claims. The
Examiner has rejected the claims solely based upon the recapture doctrine.
An oral hearing was held on April 11, 2012.
We affirm.

The claims are directed to method and system for transmitting and
receiving informational content data. Claim 38, reproduced below, is
illustrative of the claimed subject matter:
38. A method for transmitting informational content data to
at least one of a plurality of terminals, the method comprising:
receiving, by a central information transmission station,
informational content data and informational description data
from at least one of a plurality of information provider stations;
loading the informational content data and the
informational description data into a memory of the central
information transmission station;
generating an informational content data block based on
the loaded informational content data and generating an
informational data description block based on the loaded
informational description data;
linking the informational content data block and the
informational data description block to a data transmission
block; and
transmitting the data transmission block from the central
information transmission station to the at least one of the
plurality of terminals, wherein the informational data
description block includes an informational data record
regarding a data type for the informational content data block,
wherein the data type indicates that data of the informational
Appeal 2012-004829
Application 12/756,814
3
content data block is text data, video data, voice data, or audio
data.

Patent claim 1 (prosecution dependent claim 22 including the
limitations of prosecution independent claim 19):
A method for transmitting informational content data to a
plurality of terminals, the method comprising:
providing the informational content data and
informational description data in a memory of at least one
information provider station;
loading the informational content data and the
informational description data into a memory of a central
information transmission station;
generating an informational content data block based on
loaded informational content data and an informational data
description block based on loaded informational description
data in the central information transmission station;
linking the informational content data block and the
informational data description block to a data transmission
block; and
transmitting the data transmission block from the central
information transmission station to the plurality of terminals,
wherein the informational data description block includes
informational data records regarding a geographic region of
validity, a valid time period, a data format, a manner of at least
one of a coding and an encryption, and a manner and type of a
transmitted data transmission block.

Original prosecution claim 19 surrendered to obtain issuance of
patented claims:

19. A method for transmitting informational content data to a
plurality of terminals, the method comprising:
providing the informational content data and
informational description data in a memory of at least one
information provider station;
Appeal 2012-004829
Application 12/756,814
4
loading the informational content data and the
informational description data into a memory of a central
information transmission station;
generating an informational content data block based on
loaded informational content data and an informational data
description block based on loaded informational description
data in the central information transmission station;
linking the informational content data block and the
informational data description block to a data transmission
block; and
transmitting the data transmission block from the central
information transmission station to the plurality of terminals.

REJECTIONS
Claims 38-78 stand 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 application is
based.

OPINION

FINDINGS OF FACT
1. The reissue application serial number 12/756,814 was filed on April 8,
2010 based upon US Patent number 7,356,593, issued on April 8, 2008,
from application Serial number 10/070,652, filed July 17, 2002.
2. Applicant surrendered the subject matter of independent claim 19 in the
prosecution and elected to pass dependent claims 22, 23, 24, 25, 28, 29,
36, 37, and 38 to issue by rewriting these claims in independent form,
now patented claims 1, 6, 11, 16, 21, 26, 31, 36, and 38.
The limitation from original prosecution dependent claim 22 that was
included to secure issuance of the patent includes the language "wherein
Appeal 2012-004829
Application 12/756,814
5
the informational data description block includes informational data
records regarding a geographic region of validity, a valid time period, a
data format, a manner of at least one of a coding and an encryption, and a
manner and type of a transmitted data transmission block."

PRINCIPLES OF LAW
The recapture test as recently clarified by the Federal Circuit in In re
Shahram Mostafazadeh, 643 F.3d 1353 (Fed. Cir. 2011) and In re Youman,
(Fed. Cir., 2011-1136, 5/8/2012)
Against the remedial backdrop of the reissue statute, one
such circumstance that does not satisfy the “error” requirement
is embodied by the recapture rule. 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. In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir.
2011) (quoting Clement, 131 F.3d at 1468); Medtronic, 465
F.3d at 1372; Pannu v. Storz Instruments, Inc., 258 F.3d 1366,
1370-71 (Fed. Cir. 2001).
The rationale underlying the rule is that the cancellation
or amendment of the original claim in order to over-come prior
art is a deliberate action that necessarily excludes the
inadvertence or mistake contemplated by the statute’s error
requirement. Medtronic, 465 F.3d at 1372-73; Clement, 131
F.3d at 1468; Mentor, 998 F.2d at 995

In re Youman, slip opinion at 10-11.

If the modified limitation does not materially narrow (or,
in other cases, the limitation is eliminated), the Board must still
determine whether the reissued claims were materially
narrowed in other respects so that the claims have not been
enlarged, and hence avoid the recapture rule. Mostafazadeh,
643 F.3d at 1361 (applying this analysis where limitation
Appeal 2012-004829
Application 12/756,814
6
modified but not materially narrowing); N. Am. Container, 415
F.3d at 1349 (applying this analysis where added limitation was
eliminated); Pannu, 258 F.3d at 1371 (same); Hester, 142 F.3d
at 1482 (same); Mentor, 998 F.2d at 996 (same).

In re Youman, slip opinion at 20.
Properly applied, the material narrowing must relate to
the surrendered subject matter to prevent the recapture rule
from applying. Id. at 1359 (“[T]he 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).”); N. Am. Container, 415 F.3d at 1350 (applying
recapture rule bar because the narrowing of claims did not
relate to the surrendered subject matter); Pannu, 258 F.3d at
1371-72 (determining that added limitations relating to the size
and position of the haptics did not materially narrow relative to
surrendered subject matter, which related to the shape of the
haptics). 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. N. Am.
Container, 415 F.3d at 1350. If the narrowing is related to the
surrendered subject matter, it must render the reissue claim
narrower than it is broader in a manner pertinent to the subject
matter surrendered during prosecution in order to avoid the
recapture rule. See Clement, 131 F.3d at 1471.

In re Youman, slip opinion at 21.

Under the reissue statute, a patent holder may seek
reissue of an existing patent. See 35 U.S.C. § 251. The statute
provides that:
Whenever [the] patent is, through error
without any deceptive intention, 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
Appeal 2012-004829
Application 12/756,814
7
right to claim in the patent, the Director shall . . .
reissue the patent for the invention disclosed in the
original patent . . . . No new matter shall be
introduced into the application for reissue.
Id. It is well established, however, that a patentee may
not “regain[ ] through reissue the subject matter that he
surrendered in an effort to obtain allowance of the original
claims.” In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997);
see also Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995
(Fed. Cir. 1993). Under this rule against recapture, “claims that
are broader than the original patent claims in a manner directly
pertinent to the subject matter surrendered during prosecution
are impermissible.” Clement, 131 F.3d at 1468 (internal
citation and quotation marks omitted). “Whether the claims of
a reissue patent violate 35 U.S.C. § 251, and thus are invalid, is
a question of law, which we review de novo.” N. Am.
Container, Inc. v. Plastipack Packaging, Inc., 415 F.3d 1335,
1349 (Fed. Cir. 2005).
Application of the recapture rule is a three step process.
Clement, 131 F.3d at 1468; see also N. Am. Container, 415 F.3d
at 1349; Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371
(Fed. Cir. 2001). The first step is to “determine whether and in
what ‘aspect’ the reissue claims are broader than the patent
claims.” Clement, 131 F.3d at 1468. “[A] reissue claim that
deletes a limitation or element from the patent claims is
broader” with respect to the modified limitation. Id. Next, the
court must “determine whether the broader aspects of the
reissue claims relate to surrendered subject matter.” Id. at
1468–69. “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.” Id. at 1469.

Mostafazadeh at 1358.
Thus, 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. The limitation may be modified, however, so
long as it continues to materially narrow the claim scope
Appeal 2012-004829
Application 12/756,814
8
relative to the surrendered subject matter such that the
surrendered subject matter is not entirely or substantially
recaptured.

Mostafazadeh at 1359.

[T]he recapture rule is violated when a limitation added during
prosecution is eliminated entirely, even if other narrowing
limitations are added to the claim. If the added limitation is
modified but not eliminated, the claims must be materially
narrowed relative to the surrendered subject matter such that the
surrendered subject matter is not entirely or substantially
recaptured.

Mostafazadeh at 1361.

Where this is the case [that the reissue claims are broader than
the patented claims], the recapture rule is avoided only if the
claims are materially narrowed in a way that avoids recapture of
the surrendered subject matter. See N. Am. Container, 415 F.3d
at 1350; Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471.
Thus, the mere argument that the reissue claims constitute only
a partial recapture is insufficient without a corresponding
demonstration of material narrowing.

Mostafazadeh at 1361.

With respect to additional inventions, "MPEP [MPEP §
1412.02(I)(C), Rev. 7, July 2008] addresses reissue claims directed at
‘additional inventions/embodiments/species not originally claimed.’
Because the subject matter of these claims was ‘not originally claimed,’ it is
wholly unrelated to the subject matter that was surrendered during
prosecution and the recapture rule is not even triggered."
Mostafazadeh at 1360.
Appeal 2012-004829
Application 12/756,814
9

ANALYSIS
At the outset, we note that the Examiner has not rejected reissue
claims 1-37 which are the same as patent claims 1-37. We further note that
the Examiner has applied no prior art rejections to reissue claims 38-78
based upon the Dillon reference relied on in the original prosecution of
claims 1-37. While we note that reissue claims 53, 63, and 69 each include a
step of receiving which appears to be taught by the clients in the Dillon
reference, it is our view that the content of the data would not functionally
modify the recited step of receiving the data. We leave it to the Examiner to
evaluate the scope of the reissue claims with respect to the non-functional
descriptive material discussed below in our analysis.
We note that Appellant has set forth two separate lines of reasoning
for error in the Examiner's rejection of claims 38-78: 1) additional
inventions and 2) recapture of surrendered subject matter. Additionally,
Appellant contends that the Examiner has failed to address each step of the
recapture test in the office action. (App. Br. 13). We find Appellant’s
contention with respect to additional inventions to be interwoven with the
recapture discussions. Since these are two different bases for analysis, we
have separately addressed the two bases for clarity.
While we agree with Appellant that the Examiner's written content
regarding the language of each of the claims is not directly on point, the
Examiner has identified the relevant portion of the claim asserted as the
basis of the recapture rejection. Therefore, we find the Examiner has set
forth a sufficient initial showing to question whether the surrendered subject
matter has crept back into the reissue claims. Therefore, we look to
Appeal 2012-004829
Application 12/756,814
10
Appellant's arguments to show why the patent claims should be corrected
under 35 U.S.C. § 251 and that the recapture rule has not been violated.

Overlooked/Additional Inventions
Reissue Claim 38, 47, 53, 63, and 69

First, Appellant argues that the invention as recited in claims 38-76
are directed to "overlooked aspects of the invention" as identified at column
4 of the patent. Appellant identifies that column 4, lines 30-35, which
corresponds to language of patented claim 1 and column 4, lines 47-51,
corresponds to the language of reissue claim 38. (App. Br. 9-10). Appellant
asserts that reissue claim 38 is directed to "overlooked aspects of the
invention". We disagree with Appellant since the same basic invention is
recited in each of the respective claims and the claims are not directed to
wholly unrelated (materially different) inventions than the patented claims. .

With respect to independent reissue claims 47, 53, 63, and 69,
Appellant contends that these claims are directed to a "central information
transmission station", "a method for receiving informational content data at a
terminal," "a mobile radio communications station", and "a method of
receiving informational content data at a terminal " which were not present
in the patented claims. (App. Br. Sections (7) (B)-(E)). While we agree
with Appellant that the specific language of the preamble and/or the
intended field of use is slightly different, the same basic invention is recited
in each of the respective claims and the claims are not directed to wholly
unrelated (materially different) inventions than the patented claims.
Appeal 2012-004829
Application 12/756,814
11
Therefore, we find no "overlooked aspects of the invention" in each of these
respective claims.

We note that Appellant has elected to present broader claims in the
reissue application and provided limitations with respect to the content of the
data in the informational data description block (IDDB). It is our reasoned
determination that the content of the data which is either transmitted or
received, along with the receiver, the central information transmission
station, or mobile radio communications station, which also contains similar
limitations to the content of the data in the IDDB, is not directed to
overlooked aspects of the invention "and is not "wholly unrelated" to the
invention recited in the original claims and patented claims. We find that
each of the reissue claims is not "wholly unrelated" to the patented claims
where each of the reissue claims contains the same limitation to the content
of the IDDB. With respect to the mobile radio communications station, we
find that the preamble merely sets forth an intended field of use and the
remainder of the claim is directed to the same basic invention which is not
wholly unrelated with respect to the content addressed by patent claim 1 and
original prosecution claim 19 (as modified by dependent claim 22). We
find that the inclusion of claims which are directed to receiving
informational content, transmitting informational content or a general
structure for doing the receiving and transmitting is still directed to the same
invention, is not wholly unrelated from patent claim 1 and original claim 19,
and is not limited to an "overlooked" invention. (App. Br. 13-14).
Therefore, we find Appellant's arguments to the "overlooked aspects of the
invention" to be unavailing.
Appeal 2012-004829
Application 12/756,814
12
Appellant interweaves the argument for additional inventions in the
discussion of the second step of the recapture analysis. Appellant contends
that:

None of the rejected claims recite only the elements of original
claims 19 or 31, so none of the claims are broader than or equal
in scope to original claims 19 or 31. Instead, the reissue claims
are directed to overlooked aspects of the application, as
discussed in detail below. Even if a reissue claim does not
include a limitation that was added during original prosecution,
so long as the reissue claim contains a "not-equivalent
substitute (i.e., replacement) limitation that was overlooked in
the original application, there is no recapture." See MPEP
1412.02(I)(C)(2) and 1412.02(VI); see also Mostafazadeh at p.
12 ("Because the subject matter of these claims was 'not
originally claimed,' it is wholly unrelated to the subject matter
that was surrendered during prosecution and the recapture rule
is not even triggered."). In addition, to the extent that the
broadening is unrelated to any surrendered subject matter, the
recapture test does not apply.

(App. Br. 15-16). Contrary to Appellant's contention, we do not agree
that the subject matter of the present reissue claims is directed to additional
inventions/embodiments/species not originally claimed which are wholly
unrelated to the subject matter that was surrendered during prosecution and
that the recapture rule is not even triggered. Appellant contends that "none
of the rejected claims recite only the elements of original claims 19 or 31, so
none of the claims are broader than or equal to in scope to the original
claims 19 or 31." (App. Br. 15). We disagree with Appellant, as discussed
above. Therefore, we find Appellant's argument unpersuasive that the
recapture rule does not apply. Therefore, Appellant has not shown that the
recapture rule does not apply.

Appeal 2012-004829
Application 12/756,814
13
Reissue Claim 47

With respect to reissue claim 47 (App. Br. 23-27), Appellant
contends that any broadening in independent reissue claim 47 is
related to "overlooked aspects of the invention" of the informational
data description block and/or to an overlooked system that was not
claimed thus the recapture test should not apply. (App. Br. 23).
Appellant further contends that reissue claim 47 is directed to a
different form than the canceled claim and recites different elements
than original claims 19 and 31 so that reissue claims 47 does not seek
to broaden in an area of the surrendered subject matter. (App. Br. 23-
24).
Appellant contends that reissue claim 47 includes a limitation
defining the content of the informational data description block.
While we agree with Appellant that the express labels associated with
the claim limitations vary slightly from original claim 31 to the
reissue claim 47, Appellant has not identified how these different
labels attached to the claimed elements differentiate the reissue claim
47 from original claim 31 so that reissue claim 47 would be directed
to an "overlooked aspect” of the invention.

Reissue Claim 50

With respect to dependent claim 50, Appellant merely argues
that the claim limitation is similar to original method claim 24 which
depended from method claim 19. Yet, the limitation is broader than
original method claim 24 as applied to the system claim of original
Appeal 2012-004829
Application 12/756,814
14
claim 31. We find the claim to be a hybrid of the system and method
claims, and Appellant has not shown how reissue claim 50 would be
directed to "overlooked aspects of the invention."

Reissue Claim 53

With respect to reissue claim 53, Appellant argues that the
claim is not broader than or equal in scope to original claim 19 or 31
and the reissue claim is in a different form than the canceled claims.
(App. Br. 29). While we agree with Appellant that the claim is
directed to "a method of receiving…" rather than a "method of
transmitting" as in original claim 19, we find Appellant's claimed
invention is directed to an invention which is not wholly unrelated to
the invention recited in original claim 19 or 31. Additionally, we find
that reissue claim 53 contains the same proffered limitation as
discussed above with respect to reissue claim 38.
We find the method of receiving to not be wholly unrelated to
the method of transmitting in original claim 19 and the information
transmission system of original claim 31. We find no active step in
the language of reissue claim 53 beyond the single step of "receiving
…."
Since reissue claim 53 includes the same non-functional
descriptive material limitation proffered with respect to reissue claim
38 above, we cannot find that reissue claim 53 is "wholly unrelated"
to the surrendered subject matter. We find that Appellant's
contentions to be mere general arguments that the reissue claims
constitute "overlooked aspects of the invention." Therefore, we
Appeal 2012-004829
Application 12/756,814
15
conclude that Appellant has not made a sufficient showing that reissue
claim 53 is directed to "overlooked aspects of the invention."

Reissue Claim 63

With respect to reissue claim 63, Appellant presents similar arguments
advanced with respect to reissue claim 53. (App. Br. 33-38). Appellant
argues that "since reissue claims 63-68 recite different elements than the
canceled claims, reissue claims 63-68 do not seek to broaden in the area of
the surrendered subject matter." (App. Br. 34). Additionally, Appellant
contends that "Although the language of claim 63 differs slightly from the
language of the patented claims, claim 63 includes the makeup of the data
transmission block." (App. Br. 35). Appellant further contends that
"Reissue claims 63-68 are not broader in an aspect that was surrendered
during prosecution since none of the original claims were directed to a
mobile radio communications station. There is no recapture for this reason
alone." (App. Br. 36). As discussed above, we conclude that Appellant has
not made a sufficient showing that reissue claim 63 is directed to an
"overlooked aspect of the invention" which is "wholly unrelated" to the
surrendered subject matter.

Reissue Claim 69

With respect to reissue claim 69, Appellant presents similar arguments
advanced with respect to reissue claim 53 regarding the "informational data
description block." (App. Br. 38-42). Appellant further contends that:

Appeal 2012-004829
Application 12/756,814
16
claims 69-76 are directed to a different type of method than the
patented claims. All of the patented claims are directed to 1) a
method for transmitting informational content data to a plurality
of terminals or 2) an information transmission system. In
contrast, reissue claims 69-76 are directed to a method for
receiving informational content at a terminal.

(App. Br. 40-41). Appellant further contends that:

As set forth in Mostafazadeh, an alternative limitation related to
the content of the informational data description block, such as
that presented in claims 69-76, avoids the recapture rule.
Reissue claims 69-76 include a limitation related to the content
of the informational data description block that recites specific
data types - "text data, video data, voice data, or audio data.

(App. Br. 41). As discussed above, we conclude that Appellant has not
made a sufficient showing that reissue claim 69 is directed to an "overlooked
aspect of the invention" which is "wholly unrelated" to the surrendered
subject matter.

Reissue Claim 77

With respect to reissue claim 77, Appellant presents similar arguments
advanced with respect to reissue claim 53. (App. Br. 43-46). Appellant
contends that:

The reissue claims are in a different form than the canceled
claims. For example, reissue claims 77-78 recite "receiving a
data transmission block from a central information transmission
station, wherein the data transmission block is linked to an
informational content data block and an informational data
description block." In contrast, canceled claim 19 recited
"providing the informational content data and informational
description data in a memory of at least one information
Appeal 2012-004829
Application 12/756,814
17
provider station" and "loading the informational content data
and the informational description data into a memory of a
central information transmission station.” Furthermore, the
reissue claims recite actions on the terminal, which is subject
matter that was not recited by the original or the patented
claims. Because reissue claims 77-78 are directed to actions by
the terminal, to the extent that they are broadened, they are
broadened with respect to an overlooked aspect of the
invention, not in the area of the surrendered subject matter.

(App. Br. 43-44). Appellant provides similar analysis with regard to the
patented claims, which we find unpersuasive as discussed above. Appellant
further contends that:
Reissue claims 77 and 78 include limitations related to an
application on a terminal. Claims 77-78 recite "activating an
application on the terminal in response to receiving the data
transmission block" and "accessing the stored informational
content data using the application." Neither of these elements
appears in the patented claims. Thus, reissue claims 77 -78 are
directed to an overlooked aspect of the invention.

(App. Br. 44-45). Additionally, Appellant contends that:

Furthermore, claims 77-78 are directed to a different type
of method than the patented claims. All of the patented claims
are directed to 1) a method for transmitting informational
content data to a plurality of terminals or 2) an information
transmission system. In contrast, reissue claims 77-78 are
directed to a method for receiving informational content at a
terminal.

(App. Br. 45). We find Appellant's argument to be unavailing as discussed
above with respect to the method of receiving informational content data at a
terminal where the claim limitation
Appeal 2012-004829
Application 12/756,814
18

wherein the informational content data block was generated by
the central information transmission station based on
informational content data received from one of a plurality of
information provider stations and the informational data
description block was generated by the central information
transmission station based on informational description data
received from the one of the plurality of information provider
stations and the data transmission block was created by the
central information transmission station by linking the
informational content data block and the informational data
description block to the data transmission block

(Claim 53) is directed to the similar scope of the surrendered subject matter
regarding the informational data description block. We find that the
"method for receiving informational content data at a terminal…" recited in
independent claim 77 is not an "overlooked aspect of the invention" which is
"wholly unrelated" to the invention set forth in the patent claims. Therefore,
we find that the invention recited in reissue claim 77 attempts to recapture
the subject matter of original claim 19. Therefore, we conclude that
Appellant has not made a sufficient showing that reissue claim 77 is directed
to an "overlooked aspect of the invention" which is "wholly unrelated" to the
surrendered subject matter.

Recapture Rule Analysis

Reissue Claim 38

While Appellant contends that the reissue claims are directed to
overlooked aspects of the invention such that the recapture test does not
apply, Appellant addresses the three-step test for recapture as set forth in
North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335
Appeal 2012-004829
Application 12/756,814
19
(Fed. Cir. 2005) and is cited by MPEP 1412.02. (App. Br. 12-18). The test
requires analysis of these 3 steps:
1) Determining whether, and in what aspect, the reissue claims are
broader in scope than the original patent claims;
2) Determining whether the broader aspects of the reissue claims
relate to subject matter surrendered in the original prosecution; and
3) Determining whether the surrendered subject matter has crept into
the reissue claim.
With respect to the first step -"Was there broadening," Appellant
contends that to the extent that any of the reissue claims are broader and as
compared to the patented claims, the nature of the broadening relates to
overlooked aspects of the informational data description block and thus the
recapture test should not apply at all. (App. Br. 13). We disagree with
Appellant, as discussed above. We conclude that the reissue claims are
broader than the patented claims with respect to the informational content
data and with respect to the number of "terminals" ("plurality of terminals"
modified to "at least one of a plurality of terminals.").

With respect to the second step-"does any broadening aspect of the
reissued claims relate to surrendered subject matter," Appellant contends
that Mostafazadeh clarified that:
Thus, 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. The limitation may be modified, however, so
long as it continues to materially narrow the claim scope
relative to the surrendered subject matter such that the
surrendered subject matter is not entirely or substantially
recaptured.
Appeal 2012-004829
Application 12/756,814
20

(App. Br. 14). While we agree with Appellant that the Examiner's
requirement in the Answer did not directly correspond to the clarification in
Mostafazadeh, we do not agree with Appellant's contention that " none of
the claims are broader than or equal in scope to original claims 19 or 31."
(App. Br. 15). We conclude that the reissue claim 38 is broader than
original claims 19 or 31 and the patent claim 1 with respect to the
informational content data and with respect to the number of "terminals"
("plurality of terminals" modified to "at least one of a plurality of
terminals.").

With respect to the third step-"were the reissued claims materially
narrowed in other respects to avoid the recapture rule," Appellant contends
that:
recapture is avoided "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." Id. [Mostafazadeh, 643 F.3d at 1358]
(emphasis added). Thus, the proper analysis in this case is to
compare the reissue claims to the canceled claims to determine
if the reissue claims are narrower than the original claims in an
aspect related to the added limitation. See, e.g., In re Clement,
131 F .3d 1464 (Fed. Cir. 1997) (comparing reissue "claim 49
with [original] claim 42 before the ... amendments."). Reissue
claims 38-76 are materially narrowed relative to the original
claims with respect to the content of the information data
description block and reissue claims 77-78 are materially
narrowed with respect to the operations of the terminal.

(App. Br. 16). While we agree with Appellant as to the appropriate
comparison for the determination, we disagree with Appellant's conclusion
that claims 38-76 are materially narrowed relative to the original claims with
Appeal 2012-004829
Application 12/756,814
21
respect to the content of the information data description block. We find the
added limitation in reissue claim 38 is directed to non-functional descriptive
material (NFDM) concerning the information content. We find the addition
of NFDM does not "materially narrow" the claims relative to the original
claims such that full or substantial recapture of the subject matter
surrendered during prosecution is avoided. We further find that the content
of the data which is either transmitted or received does not materially limit
the claimed invention since the content of the data in the IDDB is directed to
non-functional descriptive material (NFDM) in the original, patent, and
reissue claims. We find that the content of the data does not materially limit
the method of receiving, the method of transmitting and the central
information transmission or mobile radio communications station.
The informational content of non-functional descriptive material is
not entitled to weight in the patentability analysis. See In re Lowry, 32 F.3d
1579, 1583 (Fed. Cir. 1994) (“Lowry does not claim merely the information
content of a memory. . . . Nor does he seek to patent the content of
information resident in a database.”). See also Ex parte Nehls, 88 USPQ2d
1883, 1887-90 (BPAI 2008) (precedential); Ex parte Mathias, 84 USPQ2d
1276 (BPAI 2005) (informative), aff’d, 191 Fed. Appx. 959 (Fed. Cir.
2006); Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative),
aff’d, No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36) (“wellness-related”
data in databases and communicated on distributed network did not
functionally change either the data storage system or the communication
system used in the claimed method).
Non-functional descriptive material refers to data content that does
not exhibit a functional interrelationship with the substrate and does not
affect the way the computing processes are performed. See MPEP
Appeal 2012-004829
Application 12/756,814
22
§ 2106.01. In a precedential decision, an expanded panel of the Board held
that elements that do not affect the claimed process are non-functional
material and are merely descriptive. See Ex parte Nehls, 88 USPQ2d at
1887-1888.
Here, we find that the claimed content of the IDDB does not change
the function of the methods of transmitting or receiving and does not change
the operation of the claimed central station or mobile radio communication
station.
With respect to the discussion of non-functional descriptive material
and "material narrowing" of the broadened claims, the following dialog was
transcribed by the court reporter during the oral hearing held on April 11,
2012.

JUDGE BLANKENSHIP: So the question is, why is that
a material narrowing? Because there doesn't seem to be any
difference for the transmitting step of the method. I mean, the
transmitting is the same, whatever the content of the data is. It's
just a chunk of data.
MS. HOLMES: It does include an indication that can be
used. And I understand your point that transmission of data, if
it is simply viewed as generic data -- whether or not you're
transmitting, you know, content that's ABC or DEF, I
understand that the transmission aspects of that may not be
different.
But in this particular case, what we're claiming is not
simply a method of transmitting generic data, but it also
requires that there be an indication of the particular type of data
being one of these four types of data.
JUDGE BLANKENSHIP: I still don't see how the
transmitting step would be different.
MS. HOLMES: I understand, you know, your concern
about that. I think that one of the other ways of looking at this
is that there are a number of independent claims in the -- you
know, in the patent, where what was important was to focus
Appeal 2012-004829
Application 12/756,814
23
on more specifics; rather than simply stating that the data
transmission block is transmitted, to talk more specifically
about what is being transmitted.
And that's what we're trying to focus on here, is
something that is being transmitted, something specific that's
being transmitted that was not originally claimed or not part of
the patented claims.
JUDGE COURTENAY: But it seems the step of
transmitting this data transmission block is not performed any
differently, according to the type or the content of the block.
MS. HOLMES: You're correct. We do --
JUDGE COURTENAY: Even if the data description
block includes an informational data record that specifies the
data type, it's still just a block of data that's being transmitted.
MS. HOLMES: I understand that you're looking at it as
a generic block of data. And if you look at it that way, then
yes, it is -- you know, it is data. It is a different type of data
that we're claiming.
JUDGE COURTENAY: It's data that does not appear,
as claimed, to affect the function or the act of transmitting.
MS. HOLMES: That is correct. It does not require a
different transmission mechanism.
What the claim requires is the transmission of a different
-- of a different kind of data.
JUDGE DIXON: So your position would be that the fact
that the claims are different than independent Claim 19 in the
original prosecution, and it's going to the same type of
limitation to the informational content that was added before,
then it would be material?
MS. HOLMES: It is -- it would be materially narrowed
as to the cancelled claim.
Yes. Because we have these additional limitations with
respect to these four different types of data.

(Oral Hearing Transcript 10-11). Appellant admits that the mechanism of
transmitting (and hence the method of receiving, the receiver, and the central
information transmission station and mobile radio communications station)
is not different. Therefore, we find Appellant's argument unavailing that the
Appeal 2012-004829
Application 12/756,814
24
claims are materially narrowed since the method steps and the mechanism
would be the same irrespective of the content of the data. Therefore, we
cannot find that the reissue claims have been "materially narrowed" with
respect to the surrendered subject matter.
In the sections (7)(A)-(E) (App. Br. 18-42), Appellant repeats the
same arguments addressed above with respect to each of the independent
reissue claims. We similarly find Appellant's arguments to be unpersuasive
that recapture has not crept into the claims. We agree with Appellant that
the Examiner’s position is overly restrictive in the statement of the rejection
to the extent that the Examiner would seem to require that the reissue claims
include the amendments that resulted in the allowance of patent claims 1, 6,
and 11. Yet, we find that Appellant is in the best position to clarify the
reissue claim language with respect to the original claim language and the
patent claim language as it relates to permissively correcting an error under
35 U.S.C. §251.
With respect to Appellant's argument that reissue claim 38 includes
an alternative limitation related to the content of the informational data
description block to avoid the recapture rule (App. Br. 21-22), Appellant
does not identify how the recited method of transmitting is materially
different than the method of transmitting in original claim 19 to materially
narrow the claims relative to the original claims. . We find the mere
difference in the data does not materially limit/narrow the method of
transmitting of original claim 19. Therefore, we find Appellant's argument
to be unpersuasive that the reissue recapture rule does not apply.
Appellant contends that claim 38 does not recapture canceled
subject matter because the reissue claim defines an invention different
from those of the patented claims (App. Br. 22). We disagree with
Appeal 2012-004829
Application 12/756,814
25
Appellant that the reissue claim 38 is directed to an invention different
from those of the patented claims since we find the informational
content does not change the method of transmitting the informational
content as recited in original claims 19 and reissue claim 38, as
discussed above. Therefore, we find Appellant's argument to be
unpersuasive that the reissue recapture rule does not apply.
Since Appellant has not set forth any persuasive argument that
reissue claim 38 is directed to subject matter where surrendered
subject matter has not crept into the reissue claim, we will sustain the
Examiner's rejection of reissue claim 38 and its dependent claims 39-
46. Essentially, we conclude that the informational content of the data
description data block does not materially narrow any of the recited
steps in the method of transmitting to patently distinguish the claimed
invention from original claim 19. Therefore, Appellant’s amendment
to reissue claim 38 effectively and substantially recaptures the subject
matter of original claim 19.

Reissue Claim 47

With respect to reissue claim 47 (App. Br. 23-27), we address
Appellant's arguments as set forth in the Appeal Brief rather than
separate the arguments as discussed above with respect to reissue
claims 38. Parallel analysis, as above, applies to each of the other
reissue claims.
Appellant contends that reissue claim 47 is directed to a
different form than the canceled claim and recites different elements
than original claims 19 and 31 so that reissue claims 47 does not seek
Appeal 2012-004829
Application 12/756,814
26
to broaden in an area of the surrendered subject matter. (App. Br. 23-
24).
Appellant contends that reissue claim 47 includes a limitation
defining the content of the informational data description block.
While we agree with Appellant that the express labels associated with
the claim limitations vary slightly from original claim 31 to the
reissue claim 47, Appellant has not identified how these different
labels attached to the claimed elements differentiate the reissue claim
47 from original claim 31 so that reissue claim 47 materially narrows
the claim relative to the surrendered subject matter.
With respect to the informational data records recited in reissue claim
47, we find this to be directed to non-functional descriptive material as
discussed above with respect to reissue claim 38. Appellant has not
identified how this non-functional descriptive material in the informational
data records materially narrows the claim relative to the original claim 31.
Therefore, Appellant's argument does not show that the recapture rule does
not apply.

Reissue Claim 50

With respect to dependent claim 50, Appellant merely argues
that the claim limitation is similar to original method claim 24 which
depended from method claim 19. Yet, the limitation is broader than
original method claim 24 as applied to the system claim of original
claim 31. (App. Br. 28). We find the claim to be a hybrid of the
system and method claims, and Appellant has not shown how reissue
Appeal 2012-004829
Application 12/756,814
27
claim 50 would materially narrow the claim from the surrendered
subject matter.

Reissue Claim 53

With respect to reissue claim 53, Appellant argues that the
claim is not broader than or equal in scope to original claim 19 or 31
and the reissue claim is in a different form than the canceled claims.
(App. Br. 29). While we agree with Appellant that the claim is
directed to "a method of receiving…" rather than a "method of
transmitting" as in original claim 19, we find that reissue claim 53
contains the same proffered limitation as discussed above with respect
to reissue claim 38.
We find the method of receiving to not materially differ from
the method of transmitting in original claim 19 and the information
transmission system of original claim 31 so as to materially narrow
the claim. We find no active step in the language of reissue claim 53
beyond the single step of "receiving …." Furthermore, reissue claim
53 additionally recites non-functional descriptive material regarding
the content of the data as addressed above with respect to independent
reissue claim 38 and language concerning the central transmission
station which does not limit the step of receiving. We find the
invention as recited in reissue claim 53 to include limitations to the
informational data description block which we find to be the basis for
the surrendered subject matter of original claim 19 (where patent
claim 1 further detailed this limitation to receive issuance of the
patent).
Appeal 2012-004829
Application 12/756,814
28
Since reissue claim 53 includes the same non-functional
descriptive material limitation proffered with respect to reissue claim
38 above, we cannot find that reissue claim 53 materially narrows the
claim relative to the surrendered subject matter. We find that
Appellant contends that there is no recapture, but Appellant provides
no corresponding demonstration of material narrowing of the claimed
subject matter with regards to the surrendered subject matter.
We find that the language of reissue claim 53 is as broad as the
language of original claim 19 with regards to the "informational data
description block" with the addition of the non-functional descriptive
material regarding the data type, as discussed above. Therefore, we
conclude that Appellant has not made a sufficient showing that reissue
claim 53 does not substantially recapture subject matter surrendered.

Reissue Claim 63

With respect to reissue claim 63, Appellant presents similar arguments
advanced with respect to reissue claim 53. (App. Br. 33-38). Appellant
argues that "since reissue claims 63-68 recite different elements than the
canceled claims, reissue claims 63-68 do not seek to broaden in the area of
the surrendered subject matter." (App. Br. 34). Additionally, Appellant
contends that "Although the language of claim 63 differs slightly from the
language of the patented claims, claim 63 includes the makeup of the data
transmission block." (App. Br. 35). Appellant further contends that
"Reissue claims 63-68 are not broader in an aspect that was surrendered
during prosecution since none of the original claims were directed to a
mobile radio communications station. There is no recapture for this reason
Appeal 2012-004829
Application 12/756,814
29
alone." (App. Br. 36). As discussed above, we conclude that Appellant has
not made a sufficient showing that reissue claim 63 is materially narrowed in
a way that avoids recapture of the surrendered subject matter.

Reissue Claim 69

With respect to reissue claim 69, Appellant presents similar arguments
advanced with respect to reissue claim 53 regarding the "informational data
description block." (App. Br. 38-42). Appellant further contends that:

claims 69-76 are directed to a different type of method than the
patented claims. All of the patented claims are directed to 1) a
method for transmitting informational content data to a plurality
of terminals or 2) an information transmission system. In
contrast, reissue claims 69-76 are directed to a method for
receiving informational content at a terminal.

(App. Br. 40-41). Appellant further contends that:

As set forth in Mostafazadeh, an alternative limitation related to
the content of the informational data description block, such as
that presented in claims 69-76, avoids the recapture rule.
Reissue claims 69-76 include a limitation related to the content
of the informational data description block that recites specific
data types - "text data, video data, voice data, or audio data.

(App. Br. 41). As discussed above, we conclude that Appellant has not
made a sufficient showing that reissue claim 69 is materially narrowed in a
way that avoids recapture of the surrendered subject matter.

Appeal 2012-004829
Application 12/756,814
30
Reissue Claim 77

With respect to reissue claim 77, Appellant presents similar arguments
advanced with respect to reissue claim 53. (App. Br. 43-46). Appellant
contends that:

The reissue claims are in a different form than the canceled
claims. For example, reissue claims 77-78 recite "receiving a
data transmission block from a central information transmission
station, wherein the data transmission block is linked to an
informational content data block and an informational data
description block." In contrast, canceled claim 19 recited
"providing the informational content data and informational
description data in a memory of at least one information
provider station" and "loading the informational content data
and the informational description data into a memory of a
central information transmission station.” Furthermore, the
reissue claims recite actions on the terminal, which is subject
matter that was not recited by the original or the patented
claims. Because reissue claims 77-78 are directed to actions by
the terminal, to the extent that they are broadened, they are
broadened with respect to an overlooked aspect of the
invention, not in the area of the surrendered subject matter.

(App. Br. 43-44). Appellant provides similar analysis with regard to the
patented claims, which we find unpersuasive as discussed above. Appellant
further contends that:
Reissue claims 77 and 78 include limitations related to an
application on a terminal. Claims 77-78 recite "activating an
application on the terminal in response to receiving the data
transmission block" and "accessing the stored informational
content data using the application." Neither of these elements
appears in the patented claims. Thus, reissue claims 77 -78 are
directed to an overlooked aspect of the invention.

(App. Br. 44-45). Additionally, Appellant contends that:
Appeal 2012-004829
Application 12/756,814
31

Furthermore, claims 77-78 are directed to a different type
of method than the patented claims. All of the patented claims
are directed to 1) a method for transmitting informational
content data to a plurality of terminals or 2) an information
transmission system. In contrast, reissue claims 77-78 are
directed to a method for receiving informational content at a
terminal.

(App. Br. 45). We find Appellant's argument to be unavailing as discussed
above with respect to the method of receiving informational content data at a
terminal where the claim limitation

wherein the informational content data block was generated by
the central information transmission station based on
informational content data received from one of a plurality of
information provider stations and the informational data
description block was generated by the central information
transmission station based on informational description data
received from the one of the plurality of information provider
stations and the data transmission block was created by the
central information transmission station by linking the
informational content data block and the informational data
description block to the data transmission block

(Claim 53) is directed to the similar scope of the surrendered subject matter
regarding the informational data description block. We found supra that the
"method for receiving informational content data at a terminal…" recited in
independent claim 77 is not directed to "overlooked aspects of the
invention." Therefore, we find that the invention recited in a reissue claim
77 attempts to recapture the subject matter of original claim 19. The
recapture rule is triggered only where the reissue claims are broader than the
patented claims because the surrendered subject matter has been reclaimed
Appeal 2012-004829
Application 12/756,814
32
in whole or substantial part (i.e., an added limitation has been eliminated or
revised). Since recapture is avoided 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,
we look to Appellant's Appeal Brief for Appellant's specific contentions with
respect to reissue claim 77 relative to the original claims such that full or
substantial recapture of the subject matter surrendered during prosecution is
avoided (the informational data description block content or processing
thereof). We find no persuasive contentions regarding the informational
data description block. (App. Br. 43-46). Therefore, we conclude that
Appellant has not made a sufficient showing that reissue claim 77 is
materially narrowed in a way that avoids recapture of the surrendered
subject matter.

CONCLUSIONS OF LAW
Appellant has not shown that the reissue claims are directed to
overlooked aspects of the invention, and Appellant has not shown that the
reissue claims do not recapture subject matter surrendered to secure issuance
of the patent.
DECISION
For the above reasons, the Examiner’s rejection of claims 38-78 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) (2011). See
37 C.F.R. § 41.50(f).
Appeal 2012-004829
Application 12/756,814
33

AFFIRMED

tkl