Ex Parte Kubota et al

Board of Patent Appeals and Interferences

May 29, 2012

12613474 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIFUMI KUBOTA, YOSHIHIDE KUROKI, and
MASAHIDE WATANABE
____________

Appeal 2012-000971
Application 12/613,474
Technology Center 2800
____________

Before SCOTT R. BOALICK, JOHN A. JEFFERY, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-000971
Application 12/613,474

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Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 4-28. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
This application seeks to reissue U.S. Patent 6,776,660 directed to an
electrical connector used in small electrical appliances. The connector
includes two connector elements that are coupled into a single unit, where
one connector element has a projection that engages with a corresponding
slit on the other connector element. See generally Abstract; Figs. 1-6, 8.
Claim 4 is illustrative:
4. An electrical connector comprising:
a plug connector element having a first metallic shell and adapted to
be coupled to a receptacle connector element having a second metallic shell,
the first shell comprising a top plate, a bottom plate, a first side and a second
side and having a width W and a depth D, the first and second sides being
small relative to the top and bottom plates making the first shell substantially
flat;
first and second engagement slits formed in the top plate of the first
shell, the first and second engagement slits starting from a front edge of the
top plate and extending in a direction of the depth D;
an array of electrodes positioned within the first shell extending in a
direction of the depth D between the first and second engagement slits such
that there are no electrodes between an engagement slit and its respective
side, the array of electrodes being positionally secured by insulating material
to an interior surface of the bottom plate of the first shell, leaving an
insertion cavity in the interior of the shell between the array of electrodes
and the top plate;
wherein the first and second engagement slits in the first shell are
adapted to engage with first and second engagement projections of the
receptacle connector element that project toward an interior of the receptacle
connector element and extend in a direction of a depth of the receptacle
connector element, a front end of the first and second engagement
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projections being spaced apart from a front edge of the receptacle connector
element by a predetermined distance, the engagement projections being
formed by cutting a C-shape slit in a top surface of the second shell and
bending a tongue formed downwardly.

RELATED APPEALS
Application 12/613,482 (Appeal No. 2012-000970) is said to be
related to this appeal. App. Br. 2; Ans. 3. Application 11/503,541 (Appeal
No. 2009-007162), which is said to concern a legal issue in the present
appeal (App. Br. 2), was appealed to the U.S. Court of Appeals for the
Federal Circuit which reversed the Board decision. In re Staats, 671 F.3d
1350 (Fed. Cir. 2012).

THE REJECTIONS
1. The Examiner rejected claims 4-28 under 35 U.S.C. § 251 as
improperly broadened outside the two-year statutory period. Ans. 4-5.1
2. The Examiner rejected claims 4-28 under 35 U.S.C. § 251 as
improperly recapturing surrendered subject matter. Ans. 6-9.

THE IMPROPER BROADENING REJECTION
The Examiner finds that the present reissue application improperly
broadens the patented claims beyond the two-year statutory period.
Although the Examiner acknowledges that Appellants timely presented their
intent to broaden the patented claims in the present application’s parent
reissue application (Appl’n No. 11/334,820), the Examiner nonetheless

1 Throughout this opinion, we refer to (1) the Appeal Brief filed June 13,
2011; (2) the Examiner’s Answer mailed August 4, 2011; and (3) the Reply
Brief filed October 4, 2011.
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Application 12/613,474

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contends that since Appellants actually prosecuted narrower claims in the
parent ‘820 application, they cannot later broaden claims after the two-year
statutory period in the present continuing reissue application. Ans. 4-5, 9-
11.
Appellants argue that the present broadening reissue application is
proper since they presented their intent to broaden the patented claims in the
parent ‘820 application within the two-year statutory period, despite later
cancelling the broadened claims in lieu of narrower claims during
prosecution. App. Br. 4-9; Reply Br. 2-6.

ISSUE
Under § 251, has the Examiner erred in rejecting claims 4-28 by
finding that they impermissibly broaden the patented claims outside the two-
year statutory period?

ANALYSIS
Based on the record before us, we find error in the Examiner’s
improper broadening rejection for the reasons indicated by Appellants. App.
Br. 4-9; Reply Br. 2-6. It is undisputed that the present reissue application is
a properly-filed continuation of the ‘820 reissue application. It is likewise
undisputed that Appellants filed their intent to broaden the patented claims
in the ‘820 parent reissue application within the two-year statutory period.
See Ans. 9-10. Nor is it disputed that the broadened claims were later
cancelled in the ‘820 parent reissue application in favor of narrower claims,
essentially converting that application into a narrowing reissue application
during prosecution. See App. Br. 6-8 (acknowledging (1) cancelling the
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broadened claims in the ‘820 parent reissue application, and (2) filing a
supplemental oath on May 15, 2009, indicating Appellants corrected two
errors, including claiming more than they had a right to claim).
But the fact that Appellants later pursued narrower claims in the ‘820
parent reissue application hardly negates the fact that they timely presented
their intent to broaden the patented claims in that application. In short,
neither the statute nor the case law precludes Appellants later broadening the
patented claims in a continuing reissue application where, as here,
Appellants timely presented their intent to broaden within the two-year
statutory period in the parent application. See Staats, 671 F.3d at 1355-56
(citing In re Doll, 419 F.2d 925 (CCPA 1970)).
We are therefore persuaded that the Examiner’s improper broadening
rejection is erroneous.

THE RECAPTURE REJECTION
The Examiner finds that Appellants improperly recaptured
surrendered subject matter by omitting limitations directed to forming each
connector element with a metallic shell—limitations that are said to have
been added during prosecution of the parent application (Appl’n 10/426,218)
that resulted in its issuance as the ‘660 patent. Ans. 6-9, 12-18.
Appellants argue that the recapture doctrine is inapplicable since the
claims are directed to a different embodiment than that in the patented
claims. App. Br. 9-10; Reply Br. 6-9. Appellants add that even if the
recapture doctrine applies, there is no recapture since, among other things,
the Examiner improperly defines surrendered subject matter, and, in any
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event, the claims pertain to overlooked aspects of the invention. App. Br.
10-19; Reply Br. 6-11.

ISSUE
Under § 251, has the Examiner erred in rejecting claims 4-28 by
finding that by finding that the claims improperly recapture surrendered
subject matter? This issue turns on whether the claims are directed to a
different invention than that recited in the patented claims.

ANALYSIS
As noted above, the key threshold question regarding the recapture
issue in this appeal is whether the claims are directed to a different invention
than that recited in the patented claims. For if they are, recapture does not
apply. See In re Mostafazadeh, 643 F.3d 1353, 1360 (Fed. Cir. 2011)
(noting that claimed subject matter directed to “additional
inventions/embodiments/species” not originally claimed is “wholly unrelated
to subject matter . . . surrendered during prosecution and the recapture rule is
not even triggered” (citing MPEP § 1412.02(I)(C))). Accord Medtronic, Inc.
v. Guidant Corp., 465 F.3d 1360, 1373-74 (Fed. Cir. 2006) (concluding that
recapture did not apply to certain claims covering a different embodiment
than the reissue claims).
On this record, we agree with Appellants to the extent that recapture
does not apply (App. Br. 9-10; Reply Br. 10-12), but for somewhat different
reasons. First, it is undisputed that (1) the patented claims are directed to the
combination of the first and second connector elements (i.e., the connector
elements coupled together), and (2) the present reissue application claims are
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directed solely to one of those connector elements, namely the receptacle
connector element.2 See App. Br. 9-10; Reply Br. 10-12; Ans. 12-13. As
the Examiner correctly indicates (Ans. 12), the present reissue application
claims are therefore directed to a subcombination of the combination recited
in the patented claims.
But we disagree with the Examiner’s contention (id.) that the recited
subcombination invention is not patentably distinct from the patented
combination. Where, as here, (1) a claimed combination does not require
the particulars of a recited subcombination, and (2) the subcombination has
separate utility, the combination and subcombination recite distinct
inventions—albeit related. See MPEP §§ 806, 806.05(II)(B). Notably, the
patented combination does not require the particulars of the receptacle
connector element subcombination, at least with respect to the recited
electrode array. Compare claims 1-3 of ‘660 patent with independent claims
4, 7, 15, and 20 of the present reissue application. And as Appellants
indicate (Reply Br. 8 n.5), each connector element has separate utility since,
among other things, it can mate with different connectors—not solely its
disclosed counterpart connector element as the Examiner asserts. Ans. 12.
Although Appellants emphasize the distinction between embodiments
and inventions in this context (Reply Br. 8), we nonetheless find that the

2 Although claims 4 and 5 also recite a “plug connector element,” this
element is not positively recited structurally, but rather in terms of the
receptacle connector element’s capability to be coupled to the plug
connector element. See, e.g., claim 4 (reciting that (1) the receptacle
connector element is “adapted to be coupled to a plug connector element,”
and (2) the receptacle connector element’s engagement projections are
“adapted to engage” with the plug connector element’s engagement slits
(emphases added)).
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patented claims recite related—yet distinct—inventions as noted above. In
any event, Appellants’ distinction is without a difference here, for recapture
does not apply for either additional inventions or embodiments not
originally claimed. See Mostafazadeh, 643 F.3d at 1360.
Since the recapture doctrine does not apply for the distinct invention
recited in the present reissue application, the Examiner’s recapture rejection
of claims 4-28 is erroneous for that reason alone. We therefore need not
address Appellants’ other arguments pertaining to that rejection. App. Br.
12-19; Reply Br. 9-11.

CONCLUSION
Under § 251, the Examiner erred in rejecting claims 4-28 as (1)
improperly broadening the claims outside the two-year statutory period, and
(2) recapturing surrendered subject matter.

ORDER
The Examiner’s decision rejecting claims 4-28 is reversed.

REVERSED

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