Pankaj Shah et al.

Patent Trials and Appeals Board

Dec 18, 2019

15459741 - (D) (P.T.A.B. Dec. 18, 2019)

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.
15/459,741 03/15/2017 Pankaj Shah 102096-1037749-000131US 3707
20350 7590 12/18/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
NOTIFICATION DATE DELIVERY MODE
12/18/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEATO ROBOTICS, INC.
Patentee1
____________

Appeal 2019-002571
Application 15/459,741
Patent US 8,996,172 B2
Technology Center 3900
____________

Before ALLEN R. MacDONALD, MICHELLE R. OSINSKI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

PER CURIAM

DECISION ON APPEAL
The application on appeal (Reissue Application) seeks a broadened
reissue of U.S. Patent 8,996,172 B2 (Issued Patent) which matured from
U.S. Patent Application 11/780,017 (Patent Application). The Patentee
appeals from the Examiner’s rejection of claims 27–52 under 35 U.S.C.
§ 251 as attempting to recapture subject matter surrendered during
prosecution of the Issued Patent. (See Final Action 10.)
We AFFIRM.2

1 The listed assignee of US 8,996,172 B2 (Neato Robotics, Inc.) is identified
as the real party in interest. (See Appeal Br. 3.)
2 We have jurisdiction over this appeal under 35 U.S.C. §§ 6(b) and 134.
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BACKGROUND
Claims issued in the Issued Patent (Issued Claims) recite a “robotic
device” comprising “an optical assembly,” and claims pending in the
Reissue Application (Reissue Claims) also recite a “robotic device”
comprising “an optical assembly.”
A robotic device “can be used for home and commercial applications,
such as cleaning.” (Issued Patent, 1:23–25.) When a robotic device is used
for cleaning, it “often must be operative to navigate around an environment
with no, or minimal, input from a user or an operator.” (Id. at 1:25–27.) To
this end, a sensor system can be provided for “enabling and facilitating robot
navigation.” (Id. at 1:28–29.) In a nutshell, the sensor system acquires data
regarding the relative position of a stationary object (e.g., a wall) in the
operating environment (e.g., the room being cleaned), and a navigation-
controlling module relies upon this sensor-acquired data to autonomously
navigate the robotic device. (See id. at 6:30–33, 10:50–52.)
The Issued Patent discloses a robotic device in which the sensor
system is an “optical assembly” that provides “distance data” to a
navigation-controlling module. (Issued Patent, 19:4–5.) More particularly,
the optical assembly employs “laser distance sensor (LDS) technology” to
acquire this distance data. (Id. at 3:35.) The LDS components at the heart
of this technology are a collimated-light source (e.g., a laser) and a sensor.
(See id. at 4:54–55.) The source projects collimated light into the operating
environment, and, if a stationary object is within the optical assembly’s field
of view, light incident on the stationary object is detected by the sensor.
(See e.g., id. 5:62–63, Fig. 2.)
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The Issued Patent discloses that the optical assembly can be afforded
a revolving field of view by attaching the source/sensor components to a
rotating mount. (See Issued Patent 7:62–66, 17:32–39.) The rotational
movement of this rotating mount can be unidirectional (360° rotations) or
non-unidirectional (clockwise and counterclockwise arc rotations). (See id.
at 9:5–17.) The Issued Patent indicates that, if the source/sensor components
are attached to a rotating mount, a rotary encoder “may be desirable in
many instances.” (Id. at 16:52–53.)
The Issued Patent discloses that the optical assembly can be provided
with “‘on-board’ computational functionality” by “various types of
computing hardware.” (Issued Patent, 9:44–47.) This computing hardware
can consist of a computer-readable media and/or an electronics package.
(See id. at 6:18–29, 9:44–51, 16:26–37.) And this computing hardware can
include instructions related to an optical angle (e.g., an optical-angle
instruction), the orientation of the rotating mount (e.g., a mount-orientation
instruction), simultaneous localization and mapping (e.g., a SLAM
instruction), and eliminating redundancies (e.g., a non-redundant
instruction). (See id. at 1:23–38, 4:57–62, 5:62–6:50, 16:50–62.)
As indicated above, an LDS optical assembly includes a collimated-
light source (e.g., a laser) and a sensor. (See Issued Patent, 4:54–55.) The
Issued Patent discloses that an LDS optical assembly can also include a
diffuse light source (e.g., an LED). (See id. at 7:1–4.) Thus, the Issued
Patent discloses that the robotic device can have a laser-only optical
assembly (i.e., an optical assembly with a collimated-light source but not a
diffuse-light source), or, alternatively, a laser-LED optical assembly (i.e., an
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optical assembly with both a collimated-light source and a diffuse-light
source).
The Issued Patent discloses that the robotic device’s optical assembly
can employ a “triangulation” method “to detect distance to objects.” (Issued
Patent, 6:51–54.) With the triangulation method, the sensor (e.g., a multi-
pixel sensor) is operative to detect the angle of light reflected from the
object. (See id. at 4:57–62, 5:62–6:50, 16:50–62.) The Issued Patent
discloses that a laser-only optical assembly can employ the triangulation
method of distance detection. (See id. at 5:61–64, Fig. 1.)
The Issued Patent discloses that the robotic device’s optical assembly
can instead employ an “amplitude” method “to detect distance to objects.”
(Issued Patent, 6:51–57.) With the amplitude method, the sensor detects the
“amplitude” of the light reflected from the object. (Id. at 6:61–62.) The
Issued Patent discloses that an optical assembly with “independent sources
of light of differing types” (e.g., a laser-LED optical assembly) can
overcome “shortcoming[s]” indigenous to the amplitude method of distance
detection. (Id. at 7:1–4.)
Thus, the Issued Patent discloses that the robotic device can have a
laser-only optical assembly employing the triangulation method of distance
detection; and the Issued Patent discloses that the robotic device can instead
have a laser-LED optical assembly employing the amplitude method of
distance detection.
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PRINCIPLES OF LAW
The Patent Act provides an avenue for a patentee to seek reissue of a
patent under certain circumstances:
Whenever any patent is, through error, deemed wholly or partly
inoperative or invalid, by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less than
he had a right to claim in the patent, the Director shall, on the
surrender of such patent and the payment of the fee required by
law, reissue the patent for the invention disclosed in the original
patent.
35 U.S.C. § 251. An inventor may not, however, recapture through reissue
subject matter that was surrendered to obtain allowance of the issued claims.
(In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011).)
“Application of the recapture rule is a three step process.”
(Mostafazadeh, 643 F.3d at 1358.) First, “we determine whether and in
what aspect the reissue claims are broader than the patent claims.” (In re
Youman, 679 F.3d, 1335, 1343 (Fed. Cir. 2012).) Second, we “determine
whether the broader aspects of the reissue claims relate to surrendered
subject matter.” (In re Clement, 131 F.3d 1464, 1468–69 (Fed. Cir. 1997).)
Third, we “determine whether the surrendered subject matter has crept into
the reissue claim.” (Id. 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.” (Mostafazadeh, 643 F.3d at 1358.) The narrowing must,
therefore, relate to the surrendered subject matter. (Id. at 1359.)
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The recapture rule does not apply to reissue claims directed to
“overlooked aspects” such as “additional inventions embodiments/species
not originally claimed.” (Mostafazadeh, 643 F.3d at 1360.)3
SUMMARY
We conclude that the Reissue Claims are not directed to “overlooked
aspects,” and therefore the recapture rule does apply. We also conclude that
when the recapture rule is applied, it reveals that the Reissue Claims are an
attempt to recapture subject matter that was intentionally surrendered during
prosecution of the Issued Patent. In short, the recapture rule applies, and the
Reissue Claims violate the recapture rule.
The Patentee’s arguments, for the most part, are premised upon the
Reissue Claims and the Issued Claims being directed to “different”
inventions. (Appeal Br. 5.) According to the Patentee, the Reissue Claims
are directed to a “main” invention involving a laser-only optical assembly
employing the triangulation method of distance detection; and the Issued
Claims are directed to a different “minor” invention involving a laser-LED
optical assembly employing the amplitude method of distance detection.
(See id. at 5, 14.)
We do not necessarily disagree with the Patentee’s premise that the
Reissue Claims and the Issued Claims are directed to different inventions.
We agree that the Reissue Claims could read on a laser-only optical

3 Overlooked aspects are not merely incidental features of the originally
claimed invention. (See Mostafazadeh, 643 F.3d at 1358.) Rather, they are
distinct elements which “were never claimed and thus never surrendered.”
(Youman, 679 F.3d at 1347.)
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assembly employing the triangulation method of distance detection; and we
agree that the Issued Claims could not read on a laser-only optical assembly
employing the triangulation method of distance detection. And it is possible
that the Reissue Claims and the Issued Claims are directed to different
inventions.
However, for the purposes of this appeal, it does not really matter
whether the Reissue Claims and the Issued Claims are directed to different
inventions.
Whether the Reissue Claims are directed to a different invention than
the Issued Claims does not factor into our overlooked-aspects analysis. In
our overlooked-aspects analysis, the important inquiry is whether the
Reissue Claims are directed to an invention different from those previously
claimed. They are not. A laser-only optical assembly employing the
triangulation method of distance detection (i.e., the “different” invention to
which the Reissue Claims are allegedly directed) was an invention
encompassed by claims pursued during prosecution of the Issued Patent.
Whether the Reissue Claims are directed to a different invention than
the Issued Claims factors only tangentially into our recapture-rule analysis.
In the first step of the recapture rule, we compare the Reissue Claims to the
Issued Claims. But this comparison is done only to determine whether the
Reissue Claims are broader in scope than the Issued Claims, and, if so, to
identify the aspect(s) responsible for this broadness. A broader aspect of the
Reissue Claims is that they could read on a laser-only optical assembly
employing the triangulation method of distance detection, and the Issued
Claims could not. This broader aspect exists regardless of whether or not
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the Reissue Claims are directed to a “different” invention than the Issued
Claims.
The important inquiry in our recapture-rule analysis is whether the
Reissue Claims attempt to claim an invention (different or not) that was
intentionally surrendered during prosecution of the Issued Patent. They do.
A laser-only optical assembly employing the triangulation method of
distance detection (i.e., the “different” invention to which the Reissue
Claims are allegedly directed) was an invention covered by claims pursued
during prosecution of the Issued Patent. And this allegedly “different”
invention was intentionally surrendered during prosecution when a
limitation requiring a diffuse light source was introduced to overcome a
prior art rejection.
Thus, inasmuch as the Patentee’s “main” invention is a laser-only
optical assembly employing the triangulation method of distance detection,
this “main” invention was not overlooked, and was intentionally
surrendered, during prosecution of the Issued Patent.
REISSUE CLAIMS
The Reissue Application contains claims 27–52, with claims 27, 38,
and 39 being independent claims. Reissue Claim 27 is presented below.4
[Reissue Claim] 27. A robotic device comprising:
a drive mechanism to move said robotic device;
an electronics module disposed on said robotic device to
provide instructions to said drive mechanism to position the
robotic device in an operating environment;

4 Our quotations to the Reissue Claims correspond to the Claims Appendix on
pages 19–29 of the Appeal Brief, with our annotations.
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an optical assembly disposed on said robotic device to
provide distance data to said electronics module, said distance
data related to a position of the robotic device relative to a
stationary object in the operating environment and influencing
the instructions provided to said drive mechanism;
said optical assembly comprising:
a source providing collimated light output in an
emitted light beam;
a detector sensor operative to detect a reflected
light beam from the emitted light beam incident on the
stationary object in the operating environment;
a rotating mount to which said source and said
detector sensor are attached;
a rotary encoder mounted to detect rotational
movement of the rotating mount and provide encoder
signals to the electronics module representative of the
angular orientation of the rotating mount;
a non-transitory, computer readable media including
instructions for
computing the angle of the reflected light beam to the
emitted light beam to determine a distance between the rotating
mount and the stationary object,
determining a direction of the stationary object relative to
the robotic device using the encoder signals representative of
the angular orientation of the rotating mount, and
applying a simultaneous localization and mapping
(SLAM) algorithm to the distance and the direction to
determine a location of the robotic device and to map the
operating environment.
Reissue Claim 27, and also Reissue Claims 38 and 39, recite a robotic
device in which an optical assembly is disposed “to provide distance data”
(“related to a position of the robotic device relative to a stationary object in
[an] operating environment”) to the robotic device’s navigation-controlling
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module. Reissue Claims 38 and 39 more particularly recite that the robotic
device is “for cleaning.”
Reissue Claim 27, and also Reissue Claims 38 and 39, recite that the
optical assembly comprises a collimated-light source and a sensor, but do
not require a diffuse light source. The Reissue Claims could read, therefore,
on a robotic device having a laser-only optical assembly.5
Reissue Claim 27, and also Reissue Claims 38 and 39, recite that the
optical assembly’s computing hardware includes a computer readable
media. Reissue Claim 38, and also claims depending from Reissue
Claims 27 and 39 (Reissue Claims 28 and 43), recite that the optical
assembly’s computing hardware also includes an electronics package. The
Reissue Claims could read, therefore, on computing hardware that includes
both a computer readable media and an electronics package.6
Reissue Claim 27, and also Reissue Claims 38 and 39, recite a
rotating mount, but do not specify the rotational direction of the rotating
mount’s movement. The Reissue Claims could read, therefore, on both a
unidirectional rotating mount and a non-unidirectional rotating mount.

5 For the purposes of this appeal, we need not discuss the Reissue Claims’
coverage of an optical assembly with both a collimated-light source and a
diffuse-light source (a laser-LED optical assembly).
6 Reissue Claim 38, and also Reissue Claims 28 and 43, recite that the
electronics package is “attached to said rotating mount” and executes
“digital processing.” As such, the Patentee’s contention that these features
of the electronics package are incompatible with the optical assembly
recited in the Reissue Claims (see Appeal Br. 9; 17, see also Reply Br. 4) is
inconsistent with the express language of the Reissue Claims themselves.
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Reissue Claim 38 recites that the sensor is a multi-pixel sensor that
includes “an array of pixels.” Reissue Claims 27 and 38 recite an optical-
angle instruction for “computing the angle of the reflected light beam to the
emitted light beam to determinate a distance between the rotating mount and
the stationary object.” According to the Patentee, a multi-pixel sensor and
an optical-angle instruction are defining characteristics of the triangulation
method of distance detection. (See Appeal Br. 13, 16, 17.) In other words,
according to the Patentee, the Reissue Claims containing these limitations
read only on an optical assembly employing the triangulation method of
distance detection.7
Reissue Claim 27, and also Reissue Claims 38 and 39, recite a rotary
encoder to “provide encoder signals to the electronics module representative
of the angular orientation of the rotating mount,” and a mount-orientation
instruction for “determining a direction of the stationary object relative to
the robotic device using the encoder signals representative of the angular
orientation of the rotating mount.” The Reissue Claims require, therefore,
the optical assembly to include a rotary encoder and a mount-orientation
instruction.
Reissue Claim 27, and also Reissue Claims 38 and 39, recite a SLAM
instruction (for “applying a simultaneous localization and mapping (SLAM)
algorithm to the distance and the direction to determine a location of the
robotic device and to map the operating environment”). Reissue Claims 38
and 39 also recite a non-redundant instruction (for “directing the robotic

7 For the purposes of this appeal, we need not discuss the Reissue Claims’
coverage of non-triangulation methods of distance detection.
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device to avoid redundant cleaning of the operating environment”). The
Reissue Claims require, therefore, the optical assembly to include a SLAM
instruction and a non-redundant instruction.
Thus, the Reissue Claims are broad enough to read on a robotic device
in which a laser-only optical assembly comprises:
• a collimated-light source;
• a multi-pixel sensor;
• a unidirectional rotating mount;
• a rotary encoder;
• computing hardware including both a computer readable media
and an electronics package;
• an optical-angle instruction
• a mount-orientation instruction,
• a SLAM instruction; and
• a non-redundant instruction.
The Reissue Claims could also read on a non-unidirectional rotating mount
and/or computing hardware without an electronics package.
ISSUED CLAIMS
The Issued Patent contains claims 1–25, with claims 1, 10, and 20
being independent. Issued Claim 10 is reproduced below.8
[Issued Claim] 10. A robotic device comprising:
a drive mechanism to move said robotic device;

8 Our quotations to the Issued Claims correspond to column 18, line 26
through column 20, line 39 of the Issued Patent, with our annotations.
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an electronics module disposed on said robotic device to
provide instructions to said drive mechanism to position the
robotic device in an operating environment;
an optical assembly disposed on said robotic device to provide
distance data to said electronics module, said distance data
related to a position of the robotic device relative to a
stationary object in the operating environment and
influencing the instructions provided to said drive
mechanism; said optical assembly comprising:
a source providing collimated light output;
a source providing diffuse light output;
a sensor operative to detect the outputs incident on the
stationary object in the operating environment;
a rotating mount to which said sources and said sensor are
attached; said rotating mount being rotatable through an
arbitrary number of uni-directional rotations; and
an electronics package attached to said rotating mount and
coupled to said sources and said sensor; said electronics
package executing digital processing to process data
acquired by said sensor from collimated and diffuse light
hitting said stationary object as said mount rotates to
generate the distance data.
Issued Claim 10 recites that the optical assembly comprises a
collimated-light source and a diffuse-light source, and Issued Claims 1
and 20 likewise require a collimated-light source and a diffuse-light source.
The Issued Claims could not read, therefore, on a robotic device with
a laser-only optical assembly (i.e., having a collimated-light source but not
a diffuse-light source), and thus could not read on a laser-only optical
assembly employing a triangulation method of distance detection. However,
as indicated above, the Reissue Claims are broad enough to read on a robotic
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device in which a laser-only optical assembly employs a triangulation
method of distance detection.
Thus, a broader aspect of the Reissue Claims is that they are broad
enough to read on a robotic device with a laser-only optical assembly
employing the triangulation method of distance detection, while the Issued
Claims are not.
ORIGINAL CLAIMS
Issued Claims 1–25 in the Issued Patent matured from claims 1–25
originally filed with the Patent Application, with claims 1, 10, and 20 being
independent claims. Independent claim 10, as originally filed, is reproduced
below. 9
[Original Claim] 10. A robotic device comprising:
a drive mechanism;
an electronics module to provide instructions to said
drive mechanism to position the robotic device in an operating
environment;
an optical assembly to provide distance data to said
electronics module, said distance data related to a position of
the robotic device relative to an object in the operating
environment and influencing the instructions provided to said
drive mechanism; said optical assembly comprising:
a source providing collimated light output;
a sensor operative to detect the output incident on
an object in the operating environment;
a rotating mount to which said source and said
sensor are attached; said rotating mount being rotatable

9 Our quotations to the Original Claims correspond to the claims filed in the
Patent Application on July 19, 2007, with our annotations.
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through an arbitrary number of uni-directional rotations;
and
an electronics package attached to said rotating
mount and coupled to said source and said sensor; said
electronics package executing digital processing to
process data acquired by said sensor as said mount
rotates to generate the distance data.
Original Claim 10 recited a robotic device comprising an optical
assembly “to provide distance data” (“related to a position of the robotic
device relative to an object in the operating environment”) to the robotic
device’s navigation-controlling module.
Original Claim 10 recited that the optical assembly comprised a
collimated-light source. This claim language requires the robotic device’s
optical assembly to have a collimated-light source, but neither requires nor
precludes the robotic device’s optical assembly from having a diffuse-light
source. Consequently, Original Claim 10 covered a robotic device having a
laser-only optical assembly; and Original Claim 10 also covered a robotic
device having a laser-LED optical assembly.
Original Claim 10 recited a sensor that is “operative to detect the
output incident on an object in the operating environment.” This claim
language would encompass a sensor, such as a multi-pixel sensor, that is
operative to detect the angle of light reflected from the object (i.e., the
triangulation method of distance detection); and this claim language would
encompass a sensor that is operative to detect the amplitude of light reflected
from the object (i.e., the amplitude method of distance detection).
Original Claim 10 recited a unidirectional rotating mount “to which
said source and said sensor are attached.” Original Claim 10 does not
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preclude a rotary encoder, and, as discussed above, the Issued Patent
discloses that a rotary encoder is a desirable accessory when source/sensor
components are attached to the rotating mount. Consequently, Original
Claim 10 encompassed a unidirectional rotating mount accessorized with a
rotary encoder.
Original Claim 10 recited an electronics package. Original Claim 10
did not preclude the optical assembly’s computing hardware from also
having a computer readable media. Consequently, Original Claim 10
encompassed computing hardware with both a computer readable media
and an electronics package.
Original Claim 10 did not preclude the optical assembly’s computing
hardware from including an optical-angle instruction (involving the optical
angle detected by the sensor), a mount-orientation instruction (involving
encoder signals produced by a rotary encoder), a SLAM instruction or a
non-redundant instruction. Consequently, Original Claim 10 encompassed
computing hardware (with both a computer readable media and an
electronics package) including these instructions.
Thus, Original Claim 10 encompassed a robotic device having a
laser-only optical assembly comprising all of the elements required by the
Reissue Claims, namely:
• a collimated-light source10
• a multi-pixel sensor;

10 As indicated above, Original Claim 10 also covered an optical assembly
having a collimated light source and a diffuse light source (i.e., a laser-LED
optical assembly).
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• a unidirectional rotating mount;
• a rotary encoder; and
• computing hardware including both a computer readable media
and an electronics package;
• an optical-angle instruction
• a mount-orientation instruction,
• a SLAM instruction; and
• a non-redundant instruction.
As indicated above, the Reissue Claims could also read on computing
hardware without an electronics package and/or a non-unidirectional
rotating mount. Original Claim 10 did not cover computing hardware
without an electronics package; and Original Claim 10 did not cover a
non-unidirectional rotating mount.
PROSECUTION11
As discussed above, claims 1–25 were originally filed with the Patent
Application, with claims 1, 10, and 20 being independent claims. As also
discussed above, Original Claim 10 encompassed both a laser-only optical
assembly and a laser-LED optical assembly; and Original Claim 10
encompassed both the triangulation and amplitude methods of distance
detection. Thus, Original Claim 10 encompassed a laser-only optical
assembly employing the triangulation method of distance detection.

11 Our references to “prosecution” correspond to the prosecution of the
Patent Application maturing into the Issued Patent, not the prosecution of
the Reissue Application.
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In a first Office Action, Original Claim 10 was rejected under
35 U.S.C. § 102 as anticipated by Hall.12 The Examiner found that Hall
disclosed a robotic device with an optical assembly comprising, among other
things, a collimated-light source and a sensor (but not a diffuse-light
source). (See Patent Application, Office Action mailed March 31, 2011,
pages 2–3; see also Hall ¶¶ 36, 46, 47.) In response to this rejection,
Original Claim 10 was amended to require the optical assembly to comprise
both a collimated-light source and a diffuse-light source. (See Patent
Application, Claims filed September 29, 2011.) Original Claim 10, as once
amended, is reproduced below.13
[Once-Amended Claim] 10. A robotic device comprising:
a drive mechanism;
an electronics module to provide instructions to said
drive mechanism to position the robotic device in an operating
environment;
an optical assembly to provide distance data to said
electronics module, said distance data related to a position of
the robotic device relative to an object in the operating
environment and influencing the instructions provided to said
drive mechanism; said optical assembly comprising:
a source providing collimated light output;
a source providing diffuse light output;
a sensor operative to detect the outputs incident on
an object in the operating environment;
a rotating mount to which said sources and said
sensor are attached; said rotating mount being rotatable

12 Hall, US 2010/0020306 A1; published January 28, 2010.
13 Our quotations to the Once-Amended Claims correspond to the claims
filed in the Patent Application on September 29, 2011, with our annotations.
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through an arbitrary number of uni-directional rotations;
and
an electronics package attached to said rotating
mount and coupled to said source and said sensor; said
electronics package executing digital processing to
process data acquired by said sensor as said mount
rotates to generate the distance data.
Once-Amended Claim 10 recited that the optical assembly comprised a
collimated-light source, and a diffuse-light source. In the remarks
accompanying this amendment, it was pointed out that “[t]he amended
claims recite two sources of light: a source of collimated light and a source
of diffuse light.” (Patent Application, Remarks filed September 29, 2011,
page 7.)14
The diffuse-light limitation was added to Original Claim 10 in an
effort to overcome a prior art rejection and obtain allowance of the claims.
Prior to the diffuse-light limitation being added, Original Claim 10
encompassed a robotic device with a laser-only optical assembly employing
the triangulation method of distance detection. After the diffuse-light
limitation was added to overcome a prior art rejection, Original Claim 10
(now Once-Amended Claim 10) no longer covered a robotic device with a
laser-only optical assembly, and thus no longer covered a robotic device
with a laser-only optical assembly employing the triangulation method of
distance detection.

14 This diffuse-light limitation remained in the claims, and was argued,
throughout the rest of prosecution. (See e.g., id. Remarks filed March 12,
2012, pages 7, 10; Remarks filed March 26, 2013, pages 7, 12, Remarks
filed October 17, 2013, page 7.)
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ANALYSIS
The Patentee argues that the Reissue Claims “are directed to
overlooked aspects, and should not be subject to recapture.” (Appeal Br. 5,
underlining omitted.) The Patentee alternatively argues that, even if the
recapture rule is applied, the Reissue Claims “should not be found to be
recapturing surrendered subject matter.” (Appeal Br. 15.) We have
carefully considered these arguments, but are not persuaded thereby.
Overlooked Aspects
The recapture rule does not apply to reissue claims directed to
“overlooked aspects” such as “additional inventions/embodiments/species
not originally claimed.” (Mostafazadeh, 643 F.3d at 1360.) Here, the
Reissue Claims are not directed to an invention/embodiment/species that
was not previously claimed.
The Patentee’s position is that the Reissue Claims are directed to a
robotic device having a laser-only optical assembly that employs a
triangulation method of distance detection. (See Appeal Br. 5.) The
Original Claims encompassed a robotic device having a laser-only optical
assembly that employs a triangulation method of distance detection. More
particularly, as discussed above, a robotic device reading on the Reissue
Claims was encompassed by the Original Claims, because the Original
Claims encompassed a robotic device having a laser-only optical assembly
comprising:
• a collimated-light source;
• a multi-pixel sensor;
• a unidirectional rotating mount;
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• a rotary encoder; and
• computing hardware including both a computer readable media
and an electronics package;
• an optical-angle instruction
• a mount-orientation instruction,
• a SLAM instruction; and
• a non-redundant instruction.
Thus, the Reissue Claims are not directed to an invention/embodiment/
species that was not previously claimed.
The Patentee seems to alternatively contend that a non-unidirectional
rotating mount is an overlooked aspect. (See Appeal Br. 8; Reply Br. 2–4.)
But the Reissue Claims are not directed to a non-unidirectional rotating
mount, as they could also read on a unidirectional rotating mount. Hence,
even if a non-unidirectional rotating mount is an overlooked aspect, the
Reissue Claims are not directed to this allegedly overlooked aspect.
The Patentee likewise seems to alternatively contend that computing
hardware without an electronics package is an overlooked aspect. (See
Appeal Br. 9; Reply Br. 4–5.) But, as discussed above, the Reissue Claims
do not preclude computing hardware that includes an electronics package.
Hence, even if computing hardware without an electronics package is an
overlooked aspect, the Reissue Claims are not directed to this allegedly
overlooked aspect.
Thus, we agree with the Examiner that the Reissue Claims are not
directed to overlooked aspects, and, therefore, the recapture rule applies.
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22
Recapture Rule
The recapture rule prevents a patentee from recapturing through
reissue subject matter that was surrendered to obtain allowance of the issued
claims. (Mostafazadeh, 643 F.3d at 1358.) Here, the Reissue Claims violate
the recapture rule.
The Issued Claims include the diffuse-light limitation and the Reissue
Claims remove this limitation. The removal of this limitation expands the
scope of the Reissue Claims to cover a robotic device with a laser-only
optical assembly. A robotic device having a laser-only optical assembly was
intentionally surrendered during prosecution of the Issued Patent when the
diffuse-light limitation was added to overcome a prior art rejection. And,
according to the Patentee, the additional limitations in the Reissue Claims
have “nothing to do with using a diffuse light source.” (Appeal Br. 14.)
This satisfies steps one, two, and three of the recapture rule.
The Patentee does not assert that the Examiner improperly applies the
first and second steps of the recapture rule (see Appeal Br. 15–17), and,
indeed, the record leaves little room for dispute. The Patentee acknowledges
(and, in fact, argues) that the Reissue Claims read on a laser-only optical
assembly employing a triangulation method of distance detection, but the
Issued Claims do not because they include the diffuse-light limitation. (See
id. at 14.)
There is no dispute that the diffuse-light limitation was added for the
purpose of overcoming a prior art rejection. There is no dispute that
Original Claim 10 (without the diffuse-light limitation) covered a robotic
device with a laser-only optical assembly employing the triangulation
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23
method of distance detection. And there is no dispute that Once-Amended
Claim 10 (with the diffuse-light limitation) no longer covered a robotic
device with a laser-only optical assembly employing the triangulation
method of distance detection.
Thus, the Patentee acknowledges (or at least does not dispute) that the
Reissue Claims’ coverage of an optical assembly without a diffuse light
source (e.g., a laser-only optical assembly employing the triangulation
method of distance detection) is a broader aspect under step one of the
recapture rule, and that this broader aspect relates to surrendered subject
matter under step two of the recapture rule.
But the Patentee argues that the Examiner “does not properly apply”
the third step of the recapture rule because the Reissue Claims recite
“additional limitations” which are “completely ignore[d].” (Appeal Br. 15.)
These argued additional limitations are: the computer readable media, the
multi-pixel sensor; the rotary encoder, the optical-angle instruction, the
mount-orientation instruction, the SLAM instruction; and the non-
redundant instruction. (See id. at 13–14.)15
The Patentee seems to be arguing that these additional limitations are
“materially narrowing,” and, therefore, the third step saves the Reissue

15 The Patentee asserts that “[a]dditional narrowing limitations include
limitations directed to the drive mechanism, a robot, and an electronics
module for controlling the drive mechanism.” (Appeal Br. 14.) However,
Issued Claim 10 recites a “robotic device,” “a drive mechanism to move said
robotic device,” and “an electronics module” that “provide[s] instructions to
said drive mechanism to position the robotic device in an operating
environment.” (Issued Patent 18:66–19:3.) Original Claim 10 likewise
recites these or similar limitations.
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Claims from impermissible recapture. (Appeal Br. 16.) If so, the Patentee is
forgetting a “critical” distinction that must be made when applying the third
step of the recapture rule. (Youman, 679 F.3d. at 1345.) Specifically, it is
critical to “distinguish between instances where an added limitation has been
modified versus instances where an added limitation is eliminated in its
entirety.” (Id.)
Here, the relevant surrender-generating limitation (i.e., the
diffuse-light limitation causing the surrender of a laser-only optical
assembly) “has been eliminated entirely.” (Final Action 11.) Again,
according to the Patentee, the additional limitations in the Reissue Claims
have “nothing to do with using a diffuse light source.” (Appeal Br. 14.)
And the Federal Circuit has rejected the argument that limitations can be
“materially narrowing” when they are “unrelated to the surrendered subject
matter.” (Mostafazadeh, 643 F.3d at 1359.)
Moreover, the Patentee says that the Reissue Claims are directed to a
laser-only optical assembly employing a triangulation method of distance
detection. (See Appeal Br. 14.) This is just another way of saying that the
Reissue Claims are directed to surrendered subject matter, because, as
indicated above, there is no dispute that an optical assembly without a
diffuse light source (e.g., a laser-only optical assembly employing the
triangulation method of distance detection) is surrendered subject matter.
Thus, we agree with the Examiner that the Reissue Claims violate the
recapture rule.
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Patent US 8,996,172 B2

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CONCLUSION
We AFFIRM the Examiner’s rejection of claims 27–52 under
35 U.S.C. § 251.

Claims Rejected Basis Affirmed Reversed
27–52 35 U.S.C. § 251 27–52

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