Ex Parte Tsukamoto et al

Board of Patent Appeals and Interferences

Aug 29, 2012

10320264 (B.P.A.I. Aug. 29, 2012)

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.
10/320,264 12/16/2002 Junichi Tsukamoto 450100-3243.2 3382
7590 08/29/2012
FROMMER LAWRENCE & HAUG LLP
10TH FLOOR
745 FIFTH AVENUE
NEW YORK, NY 10151
EXAMINER
GREGORY, BERNARR E
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
08/29/2012 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 JUNICHI TSUKAMOTO, KOICHI GOTO, and
SHINICHI FUKUSHIMA
____________________

Appeal 2012-010426
Application 10/320,2641
Technology Center 3600
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 This is an application for reissue of US Patent 5,796,828 (hereinafter “the
patent”), which issued August 18, 1998 on Application 08/499,332.
Appeal 2012-010426
Application 10/320,264

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 41-43, 48-50, 55-111, 113-121, 123-133, 135-140,
142-145, 147-154, 156-158, 160-167, 169-171, 173-224, 226-232, 234-259,
and 262-268. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 41, reproduced below, is illustrative of the claimed subject
matter.
41. Method comprising the steps of:
receiving information in scrambled or coded form;
receiving, at a device, access control signal generated by
a remote provider which grants a user rights to reproduce the
information;
descrambling or decoding the information;
modifying the information with a key at a device to
prevent unauthorized use thereof;
providing the modified information to a storage usable
externally from the device; and
providing said key to said device for modifying the
information.

Background
The patent issued with claims 1-41. In the reissue application,
Appellants canceled patented claims 1-41 and added claims 42-268.
Appellants subsequently canceled reissue claims 44-47, 51-54, 112, 122,
134, 141, 146, 155, 159, 168, 172, 225, 233, 260, and 261 during the
prosecution of the reissue application.

Appeal 2012-010426
Application 10/320,264

3
OPINION
To determine whether Appellants’ reissue claims violate the recapture
rule, “we apply a three-step recapture rule analysis.” In re Youman, 679
F.3d 1335, 1343 (Fed. Cir. 2012). Under the first step, we “determine
whether and in what ‘aspect’ the reissue claims are broader than the patent
claims.” In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011) (quoting
In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1998)). Under the second
step, we “determine whether the broader aspects of the reissue claims relate
to surrendered subject matter.” Mostafazadeh, 643 F.3d at 1358 (quoting
Clement, 131 F.3d at 1468–69).
If the reissue claims are broader relative to the patented
claims in a manner related to the surrendered subject matter, we
must “determine whether the surrendered subject matter has
crept into the reissue claim.” Unless the claims are materially
narrowed in a way that avoids substantial or whole recapture of
the surrendered subject matter, the surrendered subject matter
has crept into the reissue claims and they are barred under the
recapture rule.
Youman, 679 F.3d at 1344-45 (citations omitted). Thus, the third step of the
recapture rule analysis requires a determination as to whether the claims are
materially narrowed in a way that avoids substantial or whole recapture of
the surrendered subject matter. The original claim (“i.e., the claim in the
original application, prior to amendment or cancellation”) is used as the
frame of reference for determining whether the reissue claim materially
narrows. Id. at 1343 n.2, 1346. Further, “Mostafazadeh establishes, as a
ceiling for determining whether a modified limitation material[ly] narrows,
any recapture of surrendered subject matter that was in the prior art of the
original prosecution.” Id. at 1347. See Mostafazadeh, 643 F.3d at 1361
(holding that retention of a limitation related to surrendered subject matter
Appeal 2012-010426
Application 10/320,264

4
was not materially narrowing where the limitation was a feature well known
in the prior art). Additionally, “the material narrowing must relate to the
surrendered subject matter to prevent the recapture rule from applying.”
Youman, 679 F.3d at 1347. “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.” Id. at 1348 (citing Clement, 131 F.3d at
1471).
In accordance with the first step of the analysis, the Examiner
determined that the reissue claims are broader than the patented claims.
Ans. 5-15. The Examiner identified differences between the phrase
“generated by a remote provider which grants users rights to reproduce said
data signals” relied upon by Appellants to overcome an anticipation
rejection based on Vogel (US 4,930,158, iss. May 29, 1990) and the versions
of that limitation contained in independent reissue claims 41, 48, 55, 58, 61,
67, 73, 80, 86, 93, 100, 107, 117, 127, 139, 151, 164, 177, 188, 199, 205,
211, 216, 221, 229, 239, 244, 249, 253, 257, 259, 262, 268, and their
dependent claims. Ans. 5, 8-15.
The Examiner, however, has not identified any aspect in which claims
237 and 238 are broader than the patented claims and, thus, failed to
articulate any basis for the rejection of these claims 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. See Ans. 14 (acknowledging that claim 237, from which claim 238
depends, “uses the phrase, ‘generated by a remote provider which grants
users rights to reproduce [said] data signals’ as used in the rejection of
Appeal 2012-010426
Application 10/320,264

5
record”); Reply Br. 2 (pointing out that claims 237 and 238 “contain the
very words the Examiner insists must be recited to avoid recapture”).
Accordingly, we do not sustain the Examiner’s rejection of claims 237 and
238 under 35 U.S.C. § 251.
Pursuant to the second step, the Examiner determined that “the
surrender-generating limitation is ‘generated by a remote provider which
grants users rights to reproduce said data signals.’” Ans. 5.
The Examiner proceeded to hold that “any claims added during
reissue must include this limitation, unless that claim also contains an
‘overlooked aspect’ of the invention.” Id. This approach is inappropriate, as
it fails to “distinguish between instances where an added limitation has been
modified versus instances where an added limitation is eliminated in its
entirety.” See Youman, 679 F.3d at 1345. “Whereas the recapture rule
applies when surrendered subject matter is being reclaimed, overlooked
aspects by definition were never claimed and thus never surrendered.
Rather, . . . ‘overlooked aspects’ is a separate inquiry under reissue that is
independent of whether or not the recapture rule applies.” Id. at 1347.
The Examiner determined that independent reissue claims 41, 48, 55,
58, 61, 67, 73, 80, 86, 93, 100, 107, 117, 127, 139, 151, 164, 177, 188, 199,
205, 211, 216, 221, 229, 239, 244, 249, 253, 257, 259, 262, and 268, and
their dependent claims are broader than the patented claims in a manner
related to the “the surrender-generating” limitation “generated by a remote
provider which grants users rights to reproduce said data signals.” Merely
by way of example, the Examiner determined that the use of the infinitive
“to grant” in reissue claim 107 extends the granting of “rights to reproduce”
“beyond the ‘remote provider.’” Ans. 9. In discussing claim 127, the
Appeal 2012-010426
Application 10/320,264

6
Examiner characterized the use of the infinitive “to grant” in place of the
phrase “which grants” as “greatly extend[ing]” the concept of the source of
the grant of rights, and “the use of ‘rights to use’ instead of ‘rights to
reproduce’ [as] greatly extend[ing] the concept of ‘rights’ in that ‘rights to
use’ would go far beyond ‘rights to reproduce’ to any conceivable use
beyond reproducing.” Ans. 10. In discussing claim 151, the Examiner
stated that since there is no “remote provider,” the “rights to reproduce” are
not granted by the “remote provider,” that “nothing is ‘generated’ by a
‘remote provider,’” and that, consequently, the phrase in claim 151 “goes far
beyond the phrase, ‘generated by a remote provider which grants users rights
to reproduce data signals.’” Ans. 11. Such characterizations of the reissue
claims establish nothing more than that the reissue claims are broader than
the patented claims in a manner related to the phrase relied upon to
overcome the prior art rejection, and thus are directed to the second step of
the recapture rule analysis, not to the third step of the analysis.
The Examiner’s findings indicate that independent reissue claims 41,
48, 55, 58, 61, 67, 73, 80, 86, 93, 100, 107, 117, 127, 139, 151, 164, 177,
188, 199, 205, 211, 216, 221, 229, 239, 244, 249, 253, 257, 259, 262, and
268 contain modified versions of the phrase relied upon to overcome the
prior art rejection. “Such modification does not instantly implicate the
recapture rule bar . . . ; rather, such a broadening modification must be
evaluated to determine if it materially narrows relative to the original claim
such that surrendered subject matter is not entirely or substantially
recaptured.” Youman, 679 F.3d at 1345 (citation omitted).
Appellants concede that, with the exception of claims 237 and 238,
“the present reissue claims are broader than the patent claims.” Reply Br. 5.
Appeal 2012-010426
Application 10/320,264

7
Appellants further concede that “[f]or the purpose of the present appeal, it
may be assumed that the broader aspects of the reissue claims relate to
surrendered subject matter.” Id. Appellants, however, present specific
arguments as to why the reissue claims are materially narrowed relative to
the original claims, so as to avoid entire or substantial recapture of the
surrendered subject matter. See Reply Br. 7-9 (asserting that the source and
purpose of the access control signals are retained in the language of the
reissue claims); App. Br. 12-19 (asserting that the terms used in the reissue
claims have the same, or substantially the same, meaning as the terms they
replace in the phrase relied upon to overcome the prior art rejection based on
Vogel and that the allowance of the patented claims was not contingent on
any distinction between the terms used in the phrase relied upon to
overcome the rejection and the terms used in the reissue claims).
Thus, the dispute in the present appeal is limited to whether the
Examiner properly conducted the third step of the recapture rule analysis.
The Examiner did not articulate for our review any findings or
analysis directed to determining whether the claims are materially narrowed,
relative to the original claims, in a way that avoids substantial or whole
recapture of the surrendered subject matter, as urged by Appellants. Rather,
the Examiner concluded the analysis after determining that the reissue
claims are broader than the patented claims in a manner related to the phrase
relied upon to overcome the prior art rejection. The Examiner did not
conduct the third step in the recapture rule analysis. Consequently, we
cannot sustain the Examiner’s rejection, because the Examiner failed “to
distinguish this case from instances where the added limitation is deleted in
its entirety and to conduct the proper analysis for a modified limitation.”
Appeal 2012-010426
Application 10/320,264

8
See Youman, 679 F.3d at 1347 (citing such failure as a reason to vacate and
remand the Board’s decision affirming a reissue recapture rejection).
DECISION
The Examiner’s decision rejecting claims 41-43, 48-50, 55-111, 113-
121, 123-133, 135-140, 142-145, 147-154, 156-158, 160-167, 169-171, 173-
224, 226-232, 234-259, and 262-268 is reversed.
REVERSED

mls