Ex Parte Mensen

Board of Patent Appeals and Interferences

Jan 27, 2012

12940774 (B.P.A.I. Jan. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAN HENDRIK MENSEN
____________________

Appeal 2012-002607
Application 12/940,774
US Patent 5,657,600
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002607
Application 12/940,774
US Patent 5,657,600
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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
17-57. App. Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
The claims are directed to a building component for concrete form
walls. Claim 17, reproduced below, is illustrative:
17. A building component, comprising:
first and second insulating foam panels each having inner
and outer surfaces, a top and a bottom, said panels being
arranged to define a space therebetween for receiving pourable
building material;
at least two bridging members extending between and
connecting said panels; and
wherein said outer surface of said first panel is profiled to
extend outwardly and upwardly from said bottom thereof to
said top thereof and wherein said inner surface is profiled to
extend outwardly and upwardly to said top thereof to define and
limit the horizontal extent of a supporting shelf formed partly of
the pourable building material.

REFERENCES
The Examiner relies on the following prior art:
Conway
Horobin
US 718,429
US 4,884,382
Jan. 13, 1903
Dec. 5, 1989

REJECTIONS
Claims 17-57 are rejected under 35 U.S.C. § 251 based on the
“recapture rule” with respect to patented file application 08/262,505, now
U.S. Patent 5,657,600, as improperly seeking to broaden claims in a reissue
application. Ans. 5.
Claims 17-57 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Horobin and Conway. Ans. 13.
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US Patent 5,657,600
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OPINION
The rejection of claims 17-57 under 35 U.S.C. § 251 is affirmed.
A patentee may not regain through reissue subject matter surrendered
in an effort to obtain allowance of the original claims. In re Mostafazadeh,
643 F.3d 1353, 1358 (Fed. Cir. 2011). “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.’” Id. (quoting In re Clement, 131 F.3d 1464, 1468 (Fed. Cir.
1997). The recapture rule is applied as a three-step process. Id. In the first
step, we determine whether, and in what respect, the reissue claims are
broader than the original patent claims. Id.; N. Am. Container, Inc. v.
Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005). In the second
step, we determine whether the broader aspects of the reissue claims relate to
subject matter surrendered in the original prosecution. Mostafazadeh, 643
F.3d at 1358. “‘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.
(quoting Clement, 131 F.3d at 1469). Finally, we “‘determine whether the
surrendered subject matter has crept into the reissue claim.’” Id. (quoting
Clement, 131 F.3d at 1469). Violation of the rule against recapture may be
avoided under this final step of the analysis 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.
The Examiner and Appellant agree that each of the independent
claims, 17 and 34-36, contains a broader version of the limitation denoted
“Limitation B” by the Examiner:
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US Patent 5,657,600
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wherein said top of one of [sic] said panel is substantially
thicker than the bottom thereof, said outer surface of said one
panel is profiled to extend outwardly and upwardly from said
bottom thereof to said top thereof, and wherein said inside
surface of said thicker part is partially cut away in areas spaced
from said bridging members.
Ans. 10-13; Reply Br. 7 (“Claim 24 [sic 17]1 indeed is broader in that the top
of the panel need not be thicker than the bottom and no cut away areas are
required.”).
The Examiner and Appellant do not agree regarding the second step
of the analysis—the surrendered subject matter2. App. Br. 11-14. Appellant
recognizes that arguments alone can give rise to surrender. App. Br. 14
citing Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1482 (Fed. Cir.
1998). “[T]he proper inquiry is whether an objective observer viewing the
prosecution history would conclude that the purpose of the patentee’s
amendment or argument was to overcome prior art and secure the patent.”
Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006).
Our reviewing court held that “[i]f the patentee surrendered by argument, he
must clearly and unmistakably argue that his invention does not cover
certain subject matter to overcome an examiner’s rejection based on prior
art.” MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1314
(Fed. Cir. 2010) (citation omitted).

1 Based on Appellant’s discussion of the limitations, we infer that Appellant
intended to refer to claim 17, not claim 24.
2 We understand the Examiner’s reference to “paper no. 6” to refer to
Appellant’s remarks spanning pages 6 and 7 of the arguments entered into
the 08/262,505 file wrapper on Sept. 25, 1995. Appellant shares this
understanding, reproducing those arguments in the Brief. App. Br. 12-13.
Appellant refers to those same remarks as those of Sept. 24, 1995.

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Application 12/940,774
US Patent 5,657,600
5
Claims 1-12 of U.S. Patent 5,657,600 involve features of the bridging
members 42. See, e.g., Figs. 1, 4. Claims 13-16 involve features of the shelf-
forming shape of the form. See, e.g., Fig. 8. In successfully arguing to
overcome an obviousness-type double patenting rejection of claims 13-16
based on U.S. Patent 5,390,459 and U.S. Patent 2,911,818 to Smith
(“Smith”), Appellant asserted that:
the invention of claims 13-16 lies in the realization that the
foam form block can be profiled on the outside (by thickening
at 222) and on the inside (by sculpting openings at 250) to
allow the poured concrete to flow into a part of the thickened
portion of the foam, thereby forming a series of concrete fingers
integral with the wall to provide much of the support for the
brick wall.
Remarks of Sept. 25, 1995, at 7; App. Br. 13. 3 This statement indicates
Appellant’s awareness of the particular aspects of the claimed
combination—thickening and sculpting openings—which Appellant
believed to be the basis of the invention. Appellant’s characterization that
the invention “lies in the realization” that the foam form block can have
particular attributes is strong evidence that an objective observer viewing the
prosecution history would conclude that Appellant clearly and unmistakably
did not intend his invention to cover subject matter lacking those particular

3 Claims 17 and 34-36 do not contain the limitations directed to features of
the bridging members 42 referred to as “Limitation A” by the Examiner
(Ans. 10), which Appellant emphasized in distinguishing claims 1 and 12
from U. S. Patent 5,390,459 to overcome an obviousness-type double
patenting rejection of claims 1-12. Remarks of Sept. 25, 1995, at 4-6.
Appellant has not addressed the Examiner’s position concerning “Limitation
A.” In any case, “a patentee’s arguments that emphasize one feature cannot
cure arguments that clearly surrender another.” MBO Labs., Inc. v. Becton,
Dickinson & Co., 602 F.3d at 1316. Accordingly, “Limitation A” is not
pertinent to our analysis of the reissue recapture issue.
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US Patent 5,657,600
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attributes. The public may fairly rely upon these deliberate assertions made
by Appellants to obtain allowance of the original patent claims over the prior
art. See Hester Indus., 142 F.3d at 1482. “[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.” Id. citing Mentor Corp.
v. Coloplast, Inc., 998 F.2d 992, 996 (Fed. Cir. 1993). We therefore agree
with the Examiner that Appellant’s remarks of September 25, 1995, in the
prosecution of U.S. Patent 5,657,600 effectively surrendered subject matter
not including features related to thickening the top portion of the panel and
sculpting openings or “cut[ting] away” areas therein. See Limitation B, infra.
The broader aspects acknowledged by Appellant and discussed above
clearly relate to subject matter determined to have been surrendered. This is
not disputed by Appellant. See e.g., Reissue Dec’l Nov. 5, 2010, para. 7.
Appellant’s argument that the claims do not encompass any surrendered
subject matter (App. Br. 15; Reply Br. 7) is based on what Appellant
believes to be the only subject matter that could conceivably be considered
surrendered, and not the subject matter determined to have been surrendered
by the Examiner. We need not determine whether additional subject matter
was surrendered in order to decide this appeal.
Appellant contends that, under the final step of the recapture analysis,
“recapture is avoided because the claim ‘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.’”
Reply Br. 7 citing Mostafazadeh, 643 F.3d at 1359. Appellant contends that
the Examiner incorrectly stated the law of recapture regarding materially
narrowing. Reply Br. 5 citing Mostafazadeh, 643 F.3d at 1359 and Ex Parte
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Application 12/940,774
US Patent 5,657,600
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John E. Goode, Appeal No. 2011-008482 (BPAI June 27, 2011); see Ans. 8
citing Ex Parte Liebermann, Appeal No. 2007-0012 (BPAI May 17, 2007).
However, the extent to which Appellant and the Examiner disagree on the
meaning of the “materially narrowing” exception only relates to the issue of
what claim features must be materially narrowed in order to avoid recapture.
Since the claim scope is not materially narrowed at all by the limitations
Appellant contends are effective to avoid recapture under this exception, we
need not resolve this disagreement to decide this appeal.
Appellant contends that since the claims include substantially all of
Limitation B, “substantial” recapture is avoided. First, the absence of even a
single limitation among many may be sufficient to recapture “substantial”
subject matter. Even if the limitations related to profiling remain present in
the claims, deleting those limitations related to thickening and sculpting
openings would cause the claims to encompass substantial surrendered
subject matter, potentially making infringers of those properly relying on the
prosecution history of U.S. Patent 5,657,600. Simply claiming less than all
of the surrendered subject matter does not avoid the prohibition against
recapture. Second, Appellant’s argument is focused on the “substantial”
portion of the exception, but Appellant has not shown how, particularly in
light of the deletion of limitations present in the original and issued claims,
the claims are “narrowed” in any material respect. The surrendered subject
matter has “crept into the reissue claims” because a significant portion of the
now-claimed limitations is directed to the surrendered subject matter.
Accordingly, we sustain the rejection of claims 17-57 under 35 U.S.C. § 251
under the “recapture rule.”

Appeal 2012-002607
Application 12/940,774
US Patent 5,657,600
8
The rejection of claims 17-20, 27-30, 32-43, 50-53, and 55-57 under 35
U.S.C. § 103(a) as unpatentable over Horobin and Conway is affirmed.
The Examiner correctly found, and Appellant does not dispute, that
Horobin discloses the basic device of claim 17 absent the features relating to
the brick ledge. See Ans. 13-14; App. Br. 17-18; Horobin, fig. 1, col. 3, l. 41
– col. 4, l. 9. The Examiner, citing mold 16 of Conway, concluded that it
would have been obvious to modify the inner and outer surfaces of one of
Horobin’s panels to extend outwardly and upwardly to provide a cornice
finish. Ans. 14-15. Appellant correctly points out that the form is removed in
Conway. From this, Appellant concludes that Conway teaches away from
stay-in-place concrete forms. App. Br. 17. Appellant also disputes the
Examiner’s characterization of Conway’s form as “insulating” and the
Examiner’s determination that Conway and Horobin’s forms are used for the
“same intended purpose.” App. Br. 17-19.
While the main purpose of Conway’s cornice-forming mold 16
appears to be aesthetic, Conway demonstrates that it was known in the art to
provide concrete extending outwardly and upwardly from a bottom portion
of a wall to support of other building components. See Conway figs. 1, 2, 4,
6, col. 2, ll. 16-19, 38-42. Further, it is not necessary for the prior art to serve
the same purpose as that disclosed in Appellant’s Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Linter, 458 F.2d 1013, 1016 (CCPA 1972). Conway
additionally demonstrates that it was known in the art to alter the shape of
the form, for example by including ribs 9, if finishing the front of a building
with blocks or stonework. Conway 1, ll. 76-82. Where this is the case, the
cornices below the top of the wall would seem to support such a finish. See,
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US Patent 5,657,600
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e.g., Conway figs. 2, 4, 6. Profiling one of Horobin’s panels to have surfaces
extending outwardly and upwardly from the bottom thereof, amounts to
applying the known technique demonstrated by Conway, to Horobin’s
known device, in order to yield the predictable result of creating a final
structure having concrete that extends outwardly and upwardly from a
bottom portion of a wall, either for support or aesthetics, and, therefore,
would have been obvious to one having ordinary skill in the art.
Even if we were to agree with Appellant that the Examiner’s
characterization of Conway’s form as “insulating” or “for the same intended
purpose” could be considered somewhat inaccurate, these characterizations
do not demonstrate that the Examiner incorrectly concluded that the subject
matter of claim 17 would have been obvious, nor that the Examiner failed to
provide sufficient evidence and reasoning to support that conclusion. While
Conway’s forms are intended to be removed, this would not lead one of
ordinary skill in the art to believe that Conway’s teachings were
incompatible with or would “teach away” from stay-in-place forms. Contra
App. Br. 17, 19. It is the combined teachings of the references, not the
specific structures, which must be considered in an obviousness analysis. In
re Nievelt, 482 F.2d 965, 968 (CCPA 1973). The simple use of a removable
form “does not criticize, discredit or . . . discourage,” and therefore, cannot
be said to “teach away” from, the use of a stay-in-place form. See In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Applying the teachings of
Conway regarding the profile of the form to Horobin’s device would yield
the claimed subject matter including a “supporting shelf formed partly of the
pourable building material.” Contra App. Br. 20, 22 (repeating the argument
regarding claims 34 and 35).
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Application 12/940,774
US Patent 5,657,600
10
Appellant contests the rejection of claim 36 on the same basis as claim
17. App. Br. 22. Appellant’s argument is unpersuasive for the same reasons
discussed supra.
Appellant contends claim 27 is “for receiving pourable building
material,” and therefore, does not include the “pourable building material”
itself. App. Br. 20-21. Regardless, the claim does not preclude use of a
pourable building material for molding the bridging member into the panel.
Appellant chose to use broader language in the claims than was used to
describe the preferred embodiment wherein “[t]he bridging members 42 are
molded into the panels 12 and 14 in the course of producing the panels.”
Spec. col. 5, ll. 19-20. It would not be proper to import the limitation “in the
course of producing the panels” from the Specification into the claims,
particularly where Appellant chose to define the scope of the claimed subject
matter without it. We therefore agree with the Examiner that, when given its
broadest reasonable interpretation, “molded into” includes being molded into
by the pourable building material. Ans. 13, 23.

The rejection of claims 21-26, 31, 44-49, and 54 under 35 U.S.C. § 103(a)
as unpatentable over Horobin and Conway is reversed.
Regarding claim 21, the Examiner contends that Horobin’s tongue
members 26, read as the claimed “extending members”, would have a
“substantially thicker” top portion. Ans. 13-14. While the Examiner
contends that “it is inherent that the cut away parts would follow the profile
of, but are spaced from, said outer surface of the first panel” (Ans. 15, 23),
we fail to see how this would affect the thickness of Horobin’s tongue
members. See App. Br. 20. The Examiner appears to rely on the same logic
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with respect to claim 44, which is not specifically discussed in the Answer.
See App. Br. 23. Thus, the Examiner failed to articulate a reason with
rational underpinnings to support the legal conclusion of obviousness for
claims 21 and 44. Accordingly, we are constrained to reverse the Examiner’s
rejection of claims 21 and 44, and claims 22-26, 31, 45-49, and 54 by virtue
of their dependence therefrom.

DECISION
The rejection of claims 17-57 under 35 U.S.C. § 251 is affirmed.
The rejection of claims 17-20, 27-30, 32-43, 50-53, and 55-57 under
35 U.S.C. § 103(a) as unpatentable over Horobin and Conway is affirmed.
The rejection of claims 21-26, 31, 44-49, and 54 under 35 U.S.C.
§ 103(a) as unpatentable over Horobin and Conway is reversed.
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

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