Ex Parte YOUMAN et al

Board of Patent Appeals and Interferences

Sep 7, 2010

09313532 (B.P.A.I. Sep. 7, 2010)

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.
09/313,532 05/13/1999 ROGER YOUMAN UV-132 RE 4047
75563 7590 09/08/2010
ROPES & GRAY LLP
PATENT DOCKETING 39/361
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8704
EXAMINER
LONSBERRY, HUNTER B
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
09/08/2010 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 ROGER YOUMAN and MARNEY MORRIS
____________

Appeal 2010-007029
Application 09/313,532
Patent 5,629,733
Technology Center 2400
____________

Before ALLEN R. MacDONALD, Vice Chief Administrative Patent Judge,
JOHN A. JEFFERY, and ROBERT E. NAPPI, Administrative Patent
Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 24-27, 29-43, and 45-55. Claims 1-23 have been

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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indicated as containing allowable subject matter. App. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).2 We affirm.

STATEMENT OF THE CASE
Appellants seek to reissue U.S. Patent 5,629,733 which pertains to an
electronic television program guide and using a wireless remote control to
search program listings by title. See generally ‘733 Patent, `Abstract; col.
31, l. 52–col. 32, l. 16; Figs. 4, 38F. Patent claim 1 and reissue claim 24 are
illustrative with key limitations emphasized:
1. An electronic television programming guide for use in connection
with a television receiver for displaying a plurality of television programs
from a plurality of program sources on a plurality of user-selectable
television channels comprising:

user control means for issuing control commands, including channel-
control commands;

data processing means for receiving said control commands and for
generating video control commands;

video display generator means adapted to receive video control
commands from said data processing means for generating and displaying a
visual display of a plurality of television program titles on said television
receiver, said plurality of television program titles arranged alphabetically
by title; and

selection means for allowing said user to select a title for display on
said television receiver by selecting the first n characters of said title, where
n is greater than one; said data processing means being responsive to said
selection means and adapted to select said plurality of television program
titles for display on said television receiver in response to said n characters;

2 Appellants waived attendance at an oral hearing scheduled for August 12,
2010. See Hearing Waiver Confirmation filed July 12, 2010.
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wherein said video display generator means displays said n characters
and said selection means comprises means for causing each of said n
characters to cycle forward and backward through a plurality of
alphanumeric characters and means for assigning one of said alphanumeric
characters to each of said n characters.

24. An electronic television programming guide for use in connection
with a television receiver for displaying a plurality of television programs
from a plurality of sources on a plurality of user-selectable television
channels comprising:

a wireless remote control, comprising nonalphanumeric keys, that
generates control commands;

a data processor that receives the control commands from the wireless
remote control; and

a video display generator connected to the data processor that displays
an alphabetically-arranged visual display of a plurality of television program
titles on said television receiver,

wherein a user may search for a title to be displayed by selecting n
characters with the wireless remote control, where n is greater than one,
wherein each of the n characters may be selected with the wireless remote
control from a plurality of displayed alphanumeric characters by changing
from a first character to a second character using the nonalphanumeric
keys.

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THE REJECTION
The Examiner rejected claims 24-27, 29-43, and 45-55 under 35
U.S.C. § 251 as improperly recapturing surrendered subject matter. Ans.
3-4.3

CONTENTIONS
The Examiner finds that independent reissue claims 24 and 40 omit
the limitation in independent claim 1 of the original ‘733 patent reciting
means for causing each character to cycle forward and backward through
plural alphanumeric characters. Ans. 3-7. According to the Examiner, since
this limitation was added to claim 1 during prosecution of the original patent
responsive to a prior art rejection to render the claim allowable, omitting this
limitation via reissue impermissibly recaptures surrendered subject matter
under § 251. Id.
Appellants argue that while reissue claims 24 and 40 are broader than
issued claims 1 and 12 in aspects unrelated to the prior art rejections (i.e.,
regarding the data processor and video display generator), the reissue claims
are narrower than the “surrendered claim” (which is said to be original claim
1 prior to amendment) in aspects related to the prior art rejections. App. Br.
11-17; Reply Br. 12-15. According to Appellants, reissue claims 24 and 40
are narrower because neither “surrendered claim 1” nor issued claims 1 and
12 recite selecting characters from plural displayed characters with a
wireless remote control by changing from a first character to a second

3 Throughout this opinion, we refer to (1) the Appeal Brief filed April 1,
2009; (2) the Examiner’s Answer mailed June 23, 2009; and (3) the Reply
Brief filed August 24, 2009.
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character using the control’s nonalphanumeric keys as recited in reissue
claims 24 and 40. App. Br. 14-16; Reply Br. 14-15. Appellants add that
since these aspects were overlooked during original prosecution, they
materially narrow the reissue claims to avoid recapture. App. Br. 4-5; Reply
Br. 15-16. The issues before us, then, are as follows:

ISSUES
Under § 251, has the Examiner erred in rejecting reissue claim 24 by
finding that the claim improperly recaptures surrendered subject matter?
This main question turns on the following issues:
(1) In what respect is reissue claim 24 broader in scope than claim 1
of the original patent?
This issue turns on whether the limitation calling for selecting
characters from plural displayed characters with a wireless remote control by
changing from a first character to a second character using the control’s
nonalphanumeric keys recited in reissue claim 24 is broader than the
selection means comprising means for causing each character to cycle
forward and backward through plural alphanumeric characters recited in
issued claim 1.
(2) If so, does this broadening relate to the subject matter surrendered
during prosecution of the original patent?
(3) Was reissue claim 24 materially narrowed so as to be directed to
“overlooked aspects” of the invention and avoid recapture?

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FINDINGS OF FACT (FF)
The Parent Application
1. U.S. Patent Application 08/346,603 (“the parent application”) was
filed November 19, 1994 and included claim 1 directed to an electronic
television programming guide (EPG) reproduced below:
1. An electronic television programming guide for use in
connection with a television receiver for displaying a plurality of
television programs from a plurality of program sources on a plurality
of user-selectable television channels comprising:

user control means for issuing control commands, including
channel-control commands;

data processing means for receiving said control commands and
for generating video control commands;

a video display generator adapted to receive video control
commands from said data processing means for generating and
displaying a plurality of television program titles on said television
receiver, said plurality of television programs displayed alphabetically
by title; and

selection means for allowing said user to select a title for
display on said television receiver by selecting the first n characters of
said title, where n is greater than or equal to one; said data processing
means being responsive to said selection means and adapted to select
said plurality of television program titles for display on said television
receiver in response to said n characters.

Parent Appl’n, at 66.
2. On January 30, 1996, the Examiner rejected claim 1 under 35
U.S.C. § 103 over three prior art references (Young, Vogel, Reed). Non-
Final Rej. mailed Jan. 30, 1996, at 2-4.
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3. On March 11, 1996, Appellants filed an amendment that (1) added
claims 2-23, and (2) amended claim 1 to, among other things, add the
following language: “wherein said video display generator displays said n
characters and said selection means comprises means for causing said
character displays to cycle forward and backward through a plurality of
alphanumeric characters and means for assigning one of said alphanumeric
characters to each of said n characters.” Amd’t A filed Mar. 11, 1996, at 2-
8.
4. In the remarks accompanying Amendment A, Appellants note the
following:
Users are provided with a user control means (e.g., a remote
control device) that is used to input a plurality of characters in
the title of a program. Because remote control devices
generally do not include full alphanumeric keyboards, the
characters are selected by cycling through letters and numbers
until the desired character is obtained. For example, the
channel up/down arrow keys, present on virtually all television,
cable decoder box, and VCR remote control devices, may be
used to cycle backward and forward through the alphabet and
the digits 0-9 in order to select each of the characters.

Remarks Accompanying Amd’t A filed Mar. 11, 1996, at 8-9.

5. In the remarks accompanying Amendment A, Appellants further
note the following:

The requirements and constraints for an EPG system are
very different from those for a PC-based database search
system. For example, the system disclosed in Reed operates
using a full keyboard. As such, it is a simple matter to type in
the first few letters of an article title. In contrast, in an EPG
environment, the user control device is typically a hand-held
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remote control transmitter with only a very limited number of
keys. Therefore, in terms of performing searching based on
alphanumeric characters, EPGs present a problem not present in
nor solved by systems such as that described in Reed.
Applicants solve this problem by using existing keys on
the remote control device to input the characters of a program
title. . . . For example, as disclosed in applicants’ specification,
the up/down arrow keys used for changing channels in normal
television mode may be used to cycle through the letters A-Z
and the numbers 0-9 in order to choose the individual letters in
a program title.

Remarks Accompanying Amd’t A filed Mar. 11, 1996, at 12.

6. In the remarks accompanying Amendment A, Appellants further
note the following:
[A]pplicants submit that the Examiner has used improper
hindsight reconstruction to conclude that in view of Reed it
would have been obvious to implement title searching in an
EPG. In the absence of applicants’ disclosure, one of ordinary
skill in the art is faced with the dilemma of how to input 36
different characters (A-Z and 0-9) using only a few keys on a
remote control device. Applicants therefore submit that the
combination of Reed and Young or Vogel is improper.
Furthermore, . . . because Reed does not disclose how to
select multiple characters in a title using only a remote control
device, one of ordinary skill in the art would still not be
possessed of the invention described and claimed by applicants.
For example, claim 1 has been amended to recite i) that a
plurality of characters in the title are input by the user, and ii)
the specific means by which this is done -- providing a user
selection means to “cycle forward and backward through a
plurality of alphanumeric characters” in order to locate each of
the desired characters in the title.

Remarks Accompanying Amd’t A filed Mar. 11, 1996, at 13-14 (emphasis
in original).
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7. On May 17, 1996, Appellants filed a supplemental amendment
that, among other things, amended the last clause of the claim as follows
(with bracketing and underlining to indicate deletions and insertions): “said
selection means comprises means for causing each of said n characters
[displays] to cycle forward and backward through a plurality of
alphanumeric characters and means for assigning one of said alphanumeric
characters to each of said n characters.” Supp. Amd’t B filed May 17, 1996,
at 2.
8. On August 20, 1996, the Examiner mailed a Notice of Allowability
that (1) indicated the “communication is responsive to 3/11/96 and 5/17/96
Amendment” [sic]; (2) allowed claims 1-23; and (3) attached the following
Reasons for Allowance:
Claims 1-23 are allowable because the prior art fails to disclose
or suggest an electronic television program guide comprising a
selection means for allowing a user to select a title for display
by selecting the first n characters, wherein n is greater than one,
and selecting each character by cycling forward and backward
(or up/down) through a list of alphanumeric characters as
recited in the claims.

Notice of Allowability mailed Aug. 20, 1996, at 1-2.
9. The parent application issued as U.S. Patent 5,629,733 on May 13,
1997.
10. The ‘733 patent notes that in the search mode, “[c]haracters are
input using the up/down arrow keys 43A and the ENTER or ‘OK’ key 44.
By depressing the up/down keys, the characters in the character boxes cycle
through the letters of the alphabet and the digits 0-9.” ‘733 Patent, col. 31,
ll. 59-63; Fig. 38F.
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11. Figure 4 shows a remote controller 40 including numeric digit
keys 42, direction arrow keys 43A, 43B (labelled “Up,” “Down,” “Left,”
“Right”), and ENTER or “OK” key 44. ‘733 Patent, col. 10, ll. 57-64; Fig.
4.

The Reissue Application
12. On May 13, 1999, Appellants filed the present reissue application
(09/313,532) with the original patent claims 1-23 and additional claims 24-
55. In the reissue declaration, Appellants aver that “U.S. patent 5,629,733 is
partly inoperative by reason of said patent claiming less than we had a right
to claim in said patent.” Among other things, Appellants note that claim 1
requires “user control means for issuing control commands, including
channel-control commands.” According to Appellants, “[d]uring
prosecution of the ‘733 patent we failed to appreciate that our invention
should have been claimed with apparatus claims that did not include the
‘channel control commands.’ This error is corrected by new apparatus
claims 24-38.” Reissue Appl’n filed May 13, 1999, Decl. at 2.
13. Claim 24 of the reissue application was originally filed as follows
(underlining omitted):
24. An electronic television programming guide for use
in connection with a television receiver for displaying a
plurality of television programs from a plurality of sources on a
plurality of user-selectable television channels comprising:
a wireless remote control that generates control
commands;
a data processor that receives the control commands from
the wireless remote control; and
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a video display generator connected to the data processor
that displays an alphabetically-arranged visual display of a
plurality of television program titles on said television receiver,
wherein a user may search for a title to be displayed by
selecting n characters with the wireless remote control, where n
is greater than one, wherein each of the n characters may be
selected with the wireless remote control from a plurality of
displayed alphanumeric characters.

Reissue Appl’n filed May 13, 1999, at 39.
14. On May 16, 2007, the Examiner rejected claims 24 and 40 under
§ 251 as improperly recapturing surrendered subject matter. Non-Final Rej.
mailed May 16, 2007, at 2-4.
13. On November 16, 2007, Appellants amended claims 24 and 25 as
follows:
24. (Currently amended) An electronic television programming
guide for use in connection with a television receiver for displaying a
plurality of television programs from a plurality of sources on a
plurality of user-selectable television channels comprising:
a wireless remote control, comprising nonalphanumeric keys,
that generates control commands;
a data processor that receives the control commands from the
wireless remote control; and
a video display generator connected to the data processor that
displays an alphabetically-arranged visual display of a plurality of
television program titles on said television receiver,
wherein a user may search for a title to be displayed by
selecting n characters with the wireless remote control, where n is
greater than one, wherein each of the n characters may be selected
with the wireless remote control from a plurality of displayed
alphanumeric characters by changing from a first character to a
second character using the nonalphanumeric keys.

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25. (Currently amended) The electronic television
programming guide defined in claim 24 wherein each of the n
characters may be selected with the wireless remote control by
changing from a first character to a second character comprises
cycling through the displayed alphanumeric characters using the
nonalphanumeric keys.

Amd’t filed Nov. 16, 2007, at 8.
15. On December 10, 2007, the Examiner finally rejected claims 24-
55 under § 251 as improperly recapturing surrendered subject matter. Final
Rej. mailed Dec. 10, 2007, at 2-3.
16. Appellants appealed the final rejection. Notice of Appeal filed
June 9, 2008.

PRINCIPLES OF LAW
Under the recapture rule, Appellants cannot regain subject matter that
was surrendered to obtain allowance of the original claims. North Am.
Container, Inc. v. Plastipak Pkg., Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005)
(citing In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)).
The recapture rule is applied as a three-step process to determine:
(1) whether, and in what respect, the reissue claims are broader in
scope than the original patent claims;
(2) whether the reissue claims relate to the subject matter surrendered
in the original prosecution; and
(3) whether the reissue claims were materially narrowed in other
respects, so that the claims may not have been enlarged, and hence avoid the
recapture rule. North Am. Container, 415 F.3d at 1349.
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A limitation “materially narrows” the reissue claims if the narrowing
limitation is directed to one or more “overlooked aspects” of the invention.
Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1482-83 (Fed. Cir. 1998).

The Manual of Patent Examining Procedure (MPEP) provides:
If surrendered subject matter has been entirely eliminated from
a claim in the reissue application, or has been in any way
broadened in a reissue application claim, then a recapture
rejection under 35 U.S.C. § 251 is proper and must be made for
that claim.
If, however, the reissue claim(s) are really claiming
additional inventions/embodiments/species not originally
claimed (i.e., overlooked aspects of the disclosed invention),
then recapture will not be present.

MPEP § 1412.02(I)(C), 8th ed., Rev. 7, July 2008.

ANALYSIS
To determine whether Appellants impermissibly recaptured
surrendered subject matter in reissue claim 24, we consider:
(1) whether, and in what respect, the reissue claim is broader in scope
than the original patent claims;
(2) whether the reissue claim relates to the subject matter surrendered
in the original prosecution; and
(3) whether the reissue claim was materially narrowed in other
respects, so that it was not enlarged thus avoiding recapture. North Am.
Container, 415 F.3d at 1349.
We address each prong in turn.

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Reissue Claim 24 is Broader Than Issued Claim 1
We find that reissue claim 24 is broader than issued claim 1. First, it
is undisputed that the “data processor” and “video display generator”
limitations of claim 24 broaden their counterpart limitations in patented
claim 1 (i.e., the “data processing means” and “video display generator
means” limitations). See App. Br. 16; Reply Br. 15; see also Ans. 7. These
broadened limitations, however, are not germane to the Examiner’s
rejection.
But there is a dispute regarding whether the last clause of claim 24
broadens claim 1, and it is this clause that is crucial to resolving this appeal.
The Examiner notes that four limitations in patent claim 1 are omitted in
reissue claim 24, three of which are in the last clause of claim 1: (1) the
selection means (“limitation B” in the Examiner’s parlance); (2) means for
causing each character to cycle forward and backward through plural
alphanumeric characters (“limitation C”); and (3) means for assigning one of
the alphanumeric characters to each of the “n” characters (“limitation D”).
Ans. 6.
While we agree with the Examiner that these limitations are not in
claim 24, that omission is not dispositive regarding whether claim 24
broadens claim 1, for the last clause of claim 24 recites a limitation different
than claim 1, namely selecting characters from plural displayed characters
with a wireless remote control by changing from a first character to a second
character using the control’s nonalphanumeric keys. Therefore, the key
threshold question before us is whether this limitation in claim 24 broadens
its counterpart limitation in claim 1.
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We find that it does. Appellants, however, are correct that issued
claim 1 does not explicitly recite selecting characters from plural displayed
characters with a wireless remote control by changing from a first character
to a second character using the control’s nonalphanumeric keys as recited in
claim 24. App. Br. 14-16. And we agree with Appellants (id.) that this
added limitation to reissue claim 24 narrows original claim 1 with respect to
the version as it existed before claim 1 was amended during prosecution of
the original patent (i.e., claim 1 as originally filed (FF 1)). But we disagree
with Appellants that this recitation in claim 24 narrows issued claim 1. We
reach this conclusion emphasizing the distinction between the functional
language of claim 1, namely “means for causing each of said n characters to
cycle forward and backward through a plurality of alphanumeric characters,”
and the language in the last clause of claim 24.
First, claim 1’s limitation reciting “means for causing each of said n
characters to cycle forward and backward through a plurality of
alphanumeric characters” is a means-plus-function limitation that is
construed in accordance with 35 U.S.C. § 112, ¶ 6. We therefore interpret
this limitation by in light of the corresponding structure described in the
Specification and its equivalents. In re Donaldson Co., Inc., 16 F.3d 1189,
1193 (Fed. Cir. 1994) (en banc).
Appellants’ patent notes that in the search mode, depressing the
up/down keys on a remote controller causes the characters in the character
boxes to cycle through the letters of the alphabet and the digits 0-9. FF 10-
11 (emphasis added). This remote control with its nonalphanumeric keys
(i.e., the up/down keys) therefore constitutes the corresponding structure to
the recited “means for causing each of said n characters to cycle forward and
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backward through a plurality of alphanumeric characters.” That Appellants
emphasized using the remote control’s up/down arrow keys (i.e.,
nonalphanumeric keys) to achieve this functionality in responding to the
Examiner’s rejection during prosecution of the original patent only bolsters
this conclusion. See FF 4-6.
Although this corresponding structure for claim 1 is equivalent to that
recited in claim 24 (i.e., the wireless remote control with nonalphanumeric
keys), the function is not. Notably, claim 1 recites that the selection means
comprises means for causing the characters to cycle forward and backward
through plural alphanumeric characters. Claim 24, however, recites
selecting characters with the wireless remote control by changing from a
first character to a second character using the nonalphanumeric keys.
Simply put, changing from a first character to a second character in
claim 24 is broader than cycling forward and backward through plural
characters in claim 1. That dependent claim 25 further limits claim 24 in
calling for changing from a first character to a second character to comprise
cycling through the displayed alphanumeric characters using the
nonalphanumeric keys only bolsters this conclusion.
We therefore find that reissue claim 24 is broader than issued claim 1.

Certain Broader Aspects of Reissue Claim 24 Relate to Surrendered Subject
Matter

We also agree with the Examiner (Ans. 6) that certain broadened
aspects of claim 24 relate to surrendered subject matter. Notably, in
response to a prior art rejection, Appellants added the last clause of claim 1
which includes the selection means comprising means for causing said
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character displays to cycle forward and backward through plural
alphanumeric characters. FF 2-3. In connection with this amendment,
Appellants argued that providing a means to cycle forward and backward
through plural alphanumeric characters enabled selection using the existing
keys on remote control devices, namely the up/down arrow keys. FF 4-6.
The clear import of this discussion is that this added feature reciting
cycling forward and backward through alphanumeric characters was critical
to the invention to solve a problem enabling on-screen searching using
remote control devices that was unachievable with full keyboards. See id.
That the Examiner allowed the application in response to this amendment all
but indicates that the Examiner relied on this amendment and accompanying
explanation in issuing the application. See FF 8 (quoting Examiner’s
Reasons for Allowance which notes that the prior art does not disclose
“selecting each character by cycling forward and backward (or up/down)
through a list of alphanumeric characters”) (emphasis added).4
By virtue of this amendment and argument to claim 1 to render the
claims allowable, Appellants therefore surrendered the subject matter
between the version of original claim 1 (i.e., prior to amendment) and the
amended version. See North Am. Container, 415 F.3d at 1349. And as
noted above, reissue claim 24 broadens this critical surrendering-generating
limitation of claim 1 by calling for selecting characters with the wireless
remote control by changing from a first character to a second character
using the nonalphanumeric keys. This broadening therefore relates to the

4 Accord Ans. 6 (“The limitation of ‘providing a user selection means to
cycle forward and backward through a plurality of alphanumeric characters’
was argued in the parent application to make the application allowable over
the cited art in the parent application . . . .”) (emphasis omitted).
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surrendered subject matter, and essentially broadens patented claim 1 to an
intermediate scope (i.e., narrower than original patent claim 1 before
amendment, but broader than issued claim 1). See FF 1, 3, 7, 13. This
broadening therefore constitutes an impermissible recapture of surrendered
subject matter.5
We disagree with Appellants’ contention that the Board’s
interpretation of North American Container is allegedly incorrect. Reply Br.
6-7. We further disagree with Appellants’ contention that North American
Container confirms the standard set forth in Ex parte Eggert, 67 USPQ2d
1716 (BPAI 2003) (precedential). The North American Container court held
that deleting the “generally convex” limitation with respect to the “inner
walls” limitation in that case impermissibly recaptured surrendered subject
matter since the deleted language was critical in overcoming a prior art
reference during prosecution of the original patent. North Am. Container,
415 F.3d at 1350. In reaching this decision, however, the court emphasized
that it is irrelevant whether the claims as a whole are of “intermediate
scope”: the recapture rule is applied on a limitation-by-limitation basis. Id.
(emphasis added).

5 See id.; see also MPEP § 1412.02(I)(C) (noting that impermissible
recapture results if the reissue claim omits or broadens any limitation that
was added/argued during the original prosecution to overcome an art
rejection, even if it includes other limitations that narrow the claim in other
aspects) (emphasis added); see also id. (“If surrendered subject matter has
been entirely eliminated from a claim in the reissue application, or has been
in any way broadened in a reissue application claim, then a recapture
rejection under 35 U.S.C. 251 is proper and must be made for that claim.”)
(emphasis added).
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Eggert conflicts with the Federal Circuit rationale for it was this very
“intermediate scope” rationale that formed the basis for the Eggert majority's
conclusion that there was no recapture in that case. See Eggert, 67 USPQ2d
at 1717-18 (holding that broadening the scope of an issued claim via reissue
to have a scope between that of the issued claim and the rejected claim does
not impermissibly recapture surrendered subject matter under § 251). See
also Ex parte Liebermann, No. 2007-0012, 2007 WL 5211672 (BPAI 2007)
(informative), at *11-12 (noting that Eggert is inconsistent with the rationale
expressed in North American Container and should no longer be followed or
apply to USPTO proceedings). Accord Ex parte Mostafazadeh, 2009-
004238, 2009 WL 5486107 (BPAI 2009) (non-precedential), at *4-7
(explaining underlying reasoning and policy considerations in abrogating
Eggert).
In view of this conflict, Eggert is no longer viable, and, as such, find
that Appellants’ broadening via the character selection limitation in claim 24
constitutes an impermissible recapture of surrendered subject matter.

Reissue Claim 24 is not Materially Narrowed in Other Respects to Avoid
Recapture

Although we find that Appellants’ broadening relates to surrendered
subject matter as noted above, we must nevertheless determine whether
claim 24 is materially narrowed in other respects to avoid recapture. North
Am. Container, 415 F.3d at 1349. A limitation “materially narrows” the
reissue claims if the narrowing limitation is directed to one or more
“overlooked aspects” of the invention. Hester, 142 F.3d at 1482-83.
Appeal 2010-007029
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20
Appellants contend that the “wireless remote,” “nonalphanumeric
keys,” and “changing” limitations are “overlooked aspects” of the invention
since these limitations are directed to a character selection embodiment that
was not specifically claimed during original patent prosecution. Reply Br.
4-5, 16.
We disagree. While the specific language “wireless remote,”
“nonalphanumeric keys,” and “changing from a first character to a second
character” in claim 24 was not explicitly claimed during the original patent
prosecution (see FF 1, 3, 7), these limitations were, in fact, contemplated
by—and indeed correspond to—the language of patent claim 1, particularly
in light of its functional language and Appellants’ accompanying arguments
in conjunction with amending this claim. See FF 3-7. As noted above, the
remote control with its nonalphanumeric keys (i.e., the up/down keys)
constitutes the corresponding structure under § 112, sixth paragraph to the
recited “means for causing each of said n characters to cycle forward and
backward through a plurality of alphanumeric characters” in claim 1. See
Donaldson, 16 F.3d at 1193; see also FF 10-11.
As such, these aspects of the invention could hardly have been
overlooked during prosecution of the original patent. That Appellants
emphasized using the remote control’s up/down arrow keys (i.e.,
nonalphanumeric keys) to achieve the functionality of claim 1 in responding
to the Examiner’s rejection during this prosecution only bolsters this
conclusion. See FF 4-6.

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21
And changing from a first character to a second character in claim 24
is merely broader than cycling forward and backward through plural
characters in claim 1.6 As such, the “changing” limitation in claim 24
pertains to the same embodiment as the “cycling forward and backward”
limitation in claim 1, and therefore does not constitute an overlooked aspect
of the invention.7 That Appellants acknowledge that the recited character
selection with the wireless remote control in claim 24 “is performed, for
example, during the cycling of characters (such as is claimed in claims 1
and 12)” is telling in this regard. App. Br. 10-11 (emphasis added).
We therefore do not find claim 24 to be materially narrowed in other
respects to avoid recapture. As such, Appellants’ claim 24 constitutes an
impermissible recapture of surrendered subject matter. We reach a similar
conclusion regarding (1) independent claim 40 which recites commensurate
limitations, and (2) dependent claims 25-27, 29-39, 41-43, and 45-55 not
separately argued.

6 As noted previously, this broadening is evidenced by dependent claim 25
which further limits claim 24 in calling for changing from a first character to
a second character to comprise cycling through the displayed alphanumeric
characters using the nonalphanumeric keys.
7 Notably, original patent claim 23 actually includes language directed to a
“user control means including up/down arrow keys” and changing the
displayed alphanumeric character responsive to depressing an up/down
arrow key. Claim 23 (steps (a) and (d)) (emphasis added). These limitations
only further evidence our conclusion that the aspects recited in claim 24
directed to the wireless remote control, nonalphanumeric keys, and changing
from one character to another were not overlooked during prosecution of the
original patent. Accord FF 4 (“Users are provided with a user control means
(e.g., a remote control device) that is used to input a plurality of characters
in the title of a program.”) (emphasis added).
Appeal 2010-007029
Application 09/313,532

22
CONCLUSION
The Examiner did not err in rejecting claims 24-27, 29-43, and 45-55
under § 251.

ORDER
The Examiner’s decision rejecting claims 24-27, 29-43, and 45-55 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).

AFFIRMED

pgc

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