10008079 (B.P.A.I. Jun. 27, 2012)

Ex Parte Lee

Board of Patent Appeals and InterferencesJun 27, 2012

10008079 (B.P.A.I. Jun. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte IK-SOO LEE ____________________ Appeal 2012-005632 Application 10/008,079 Patent 5,988,827 Technology Center 3700 ____________________ Before LINDA E. HORNER, KEN B. BARRETT, and JAMES P. CALVE, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ik-Soo Lee (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 46-54 in reissue application 10/008,079 (“the ‘079 application”), filed November 8, 2001. The reissue application seeks to reissue U.S. Patent 5,988,827 (“the ‘827 patent”), issued November 23, 1999, based on application 08/847,017 (“the ‘017 application”), filed May 1, 1997. Before us for review is the Examiner’s rejection of claims 46-54 Appeal 2012-005632 Application 10/008,079 Patent 5,988,827 2 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 Claim 46, reproduced below, is representative of the subject matter on appeal. 46. A backlight unit for a display device comprising: a mold frame which includes a groove; a light source on the mold frame, said light source being operative to provide light; and a light guide panel on the mold frame in spaced apart relation from the light source, including a light guide projection in the groove, the light guide projection having at least one rounded corner, the mold frame groove and the at least one rounded corner of light guide projection being cooperative to maintain the light guide panel and the light source in spaced relation, the at least one rounded corner of the light guide projection being operative to reduce concentration of the light in the light guide projection. ISSUE The Examiner found that Appellant amended the claims of the ‘017 application, which matured into the ‘827 patent, to include limitations regarding the rounded corners of the mold frame groove to overcome prior art rejections. Ans. 4-5. The Examiner’s recapture rejection is based on the fact that the present independent reissue claims 46 and 49 lack a limitation directed to a rounded corner on the mold frame groove. Id. at 4-5. Appeal 2012-005632 Application 10/008,079 Patent 5,988,827 3 Appellant argues that the Examiner erred in rejecting the reissue claims based on recapture because the second step of the Clement1 test is not satisfied in that “what may arguably be the broader aspects of claims 46 and 49 do not relate to surrendered subject matter.” App. Br. 6. The issue presented by this appeal: Does the lack of a limitation directed to a rounded corner on the mold frame groove in reissue claims 46 and 49 relate to surrendered subject matter? ANALYSIS In support of the determination that Appellant is attempting to recapture subject matter surrendered during the prosecution that led to issuance of the ‘827 patent, the Examiner points to portions of the Amendment and Response dated February 16, 1999 (hereinafter “Amendment”). See Ans. 4-7. We have reviewed those portions, including Appellant’s arguments and the corresponding amendments of the claims. We determine that an objective public observer would not discern a surrender of a non-rounded corner on the mold frame groove during the prosecution in order to overcome prior art and obtain the ‘827 patent. See Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006). We recognize that Appellant’s amendment of the independent claims did include insertion of the phrase “the rounded corners of the mold frame groove.” Amendment at 3, 4. We also recognize that Appellant argued that the rounded corners of the mold frame groove and of the light guide 1 In re Clement, 131 F.3d 1464, 1468-69 (Fed. Cir. 1997). Appeal 2012-005632 Application 10/008,079 Patent 5,988,827 4 projection cooperate to maintain the light guide panel’s spacing from the light source. See, e.g., id. at 11, 12; see also App. Br. 10. However, Appellant did not place any emphasis on the mold frame groove’s rounded characteristic as playing a part in this spacing maintenance. Additionally, we find persuasive Appellant’s argument that “at most, the rounded corner of the mold frame was only tangentially mentioned to maintain antecedent basis in conformance with the original claim language.”2 App. Br. 9. As such, we cannot sustain the Examiner’s rejection. CONCLUSION The lack of a limitation directed to a rounded corner on the mold frame groove in reissue claims 46 and 49 does not relate to surrendered subject matter. DECISION The decision of the Examiner to reject claims 46-54 is reversed. REVERSED mls 2 The pertinent original claims recited “a mold frame which includes a groove having at least one rounded corner.”