STATEMENT OF CASE

(Reproduction of the Board's Opinion)

Appeal 2011-000463
Application 12/378,967
Introduction

Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1-5 and 7-10. Claims 6 and 11-26 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A method for cutting and sealing two layers of film together near an edge of heat-sealable material by a side sealer apparatus comprising the steps of:
moving said heat sealable material through said side sealer apparatus comprises the steps of providing a top drive roll spaced apart from a top idler roll and providing a bottom drive roll spaced apart from a bottom idler roll and positioned under said top drive roll and top idler roll respectively positioning a first pair of spaced-apart belts around and between said top drive roll and said top idler roll, and positioning a second pair of spaced-apart belts around and between said bottom drive roll and said bottom idler roll;
generating heat to cut and seal near said edge of said heat sealable material with means attached to a bracket suspending said heat generating means in an air space from a frame of said side sealer apparatus, and positioning said heat generating means at a predetermined angle relative to a horizontal plane of said moving means in the path of said heat-sealable material thereby removing excess film;
locating said heat generating means in said air space between said belts positioned on an inner side of said heat generating means and said belts positioned on an outer side of said heat generating means;
providing an elongated metal sheathed body having an internal heating mechanism to generate said heat and a thermocouple; and
providing closed loop control of said heat generating means in accordance with a predetermined temperature setting with means connected to said thermocouple.

Rejection
The Examiner rejected claims 1-5 and 7-10 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter.

Appellants' Contention
Appellants contend that the Examiner erred in rejecting claims 1-5 and 7-10 under 35 U.S.C. § 251 as being an improper recapture of surrendered subject matter because “[t]he amendment of ‘V-belts' is not
recapturing canceled subject matter” (Original App. Br. 15 (emphasis omitted); Replacement App. Br. 12, 17, 22, 27).

Issue on Appeal
The sole issue before the Board is whether Appellants have established that the Examiner erred in rejecting claims 1-5 and 7-10 under 35 U.S.C. § 251 based on recapture.

FINDINGS OF FACT

The following findings of fact (FF) are supported by a preponderance of the evidence.

A. Prosecution history of the original application
1. U.S. Patent 7,281,362 (“the patent”), sought to be reissued, is based on Application 10/994,691, filed November 22, 2004 (“original application”).
2. During prosecution of the original application, the Examiner pointed out that “BILLET ET AL discloses a conveyer system using v-belts” (Final Rejection 4 (Sept. 21, 2006)).
3. The Applicants at pages 18-19 of the amendment dated November 27, 2006, stated that (emphasis added):
In Claim 5 which is dependent on Claim 1, Applicants have pointed out the location of the heater 28 by calling for “said heat generating means, being mounted to said bracket suspending said heat generating means in an air space from a frame of said side sealer apparatus at said predetermined angle relative to said horizontal plane, is located in said air space between said V-belts positioned on an inner side of said heat generating means and said V-belts positioned on an outer side of said heat generating means.”
4. The Examiner at page 4 of the non-final office action dated May 3, 2007, stated that (emphasis added): “Claims 5, 9, and 14 contain allowable material, if written to clearly delineate the heat generating means
being separate from the sealer as well as the heat generating means being suspended between the belts.”
5. At page 2 of the Interview Summary dated May 3, 2007, and attached to the August 14, 2007, Notice of Allowance, the Examiner stated that:
Applicant [sic] pointed out that the prior art does not show the heat-generating means positioned in an air space between the two V-belts. Examiner agreed but pointed out that while this is claimed in claims 5, 9, and 13 [sic], it is not recited in the independent claims. Applicant and Examiner discussed appropriate
amendments for the independent claims 1, 6, 10, and 15 to include the aformentioned [sic] feature and to distinguish them clearly. Applicant authorized Examiner to make the amendment by Examiner's Amendment.
6. The August 14, 2007, Notice of Allowance also replaced entirely claims 1, 6, 10, and 15 by essentially adding the subject matter of claims 5, 9, and 14 to claims 1, 6, and 10 respectively. The amendment to
claim 15 also added similar subject matter.
7. The patent was issued October 16, 2007.
B. Reissue Application
8. The broadening Reissue Application 12/378,967 (“reissue application”) was filed February 20, 2009.
9. The essence of the claim change in the reissue application is to amend the repeated references to “v-belts” to “belts.”

PRINCIPLES OF LAW

Surrender – Objective Observer
It is clear that in determining whether “surrender” of subject matter has occurred, the 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. This is because the recapture rule is aimed at ensuring that the public can rely on a patentee's admission during prosecution of an original patent. “It is precisely because the patentee amended his claims to overcome prior art that a member of the public is entitled to occupy the space abandoned by the patent applicant. . . . [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.” Mentor Corp. [v. Coloplast, Inc.], 998 F.2d [992,] 996 [(Fed. Cir. 1993)]; see also Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1384 (Fed. Cir. 1998) (“[T]he ‘recapture rule' prevents a patentee from regaining through reissue subject matter surrendered during prosecution, thus ensuring the ability of the public to rely on a patent's public record.”) (emphasis added). Thus, if the objective public observer can discern a surrender of subject matter during the prosecution of an original patent in order to overcome prior art and obtain the patent, then the recapture rule should prevent the reissuing of that patent to claim the surrendered subject matter. Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006) (footnote omitted).

If 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. Medtronic[, Inc. v. Guidant Corp.], 465 F.3d [1360,] 1376 [(Fed. Cir. 2006)] (holding that a patent attorney's argument did not “clearly and unmistakably surrender” the subject matter); Hester [Indus., Inc. v. Stein, Inc.], 142 F.3d [1472,] 1482 [(Fed. Cir. 1998)] (explaining that “unmistakable assertions made to the Patent Office in support of patentability” “can give rise to a surrender for purposes of the recapture rule”). MBO Labs., Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 1314 (Fed. Cir. 2010).

ANALYSIS

We find that Appellants' argument of November 27, 2006, (FF 3) is directed to the “location of the heater” and that the Examiner clearly recognized this on the record on May 3, 2007, by stating that claims 5, 9, and 14 contain allowable material in the form of “the heat generating means being suspended between the belts” (FF 4). The “v-belts” were not included in the Examiner's statement as being required for allowability. To the contrary, on September 21, 2006, the Examiner stated that “v-belts” were known in the prior art (FF 2). Therefore, we conclude that an objective observer looking to the record on May 3, 2007, would understand that allowable material existed and did not include the “v-belts.” We further conclude that an objective observer looking to the record subsequent to the above events would understand that the Interview Summary (FF 5) and amendments in the Notice of Allowance (FF 6) were directed to constructing claims directed to the previously recognized allowable material.

We conclude that an objective observer looking to the record as a whole would conclude that Appellants had surrendered every heater location except the location of the heater or heat generating means being suspended between the belts, but did not surrender all belts except “v-belts.” We agree with Appellants' contention.

CONCLUSIONS

(1) Appellants have established that the Examiner erred in rejecting claims 1-5 and 7-10 under 35 U.S.C. § 251 based on recapture.
(2) On this record, claims 1-5 and 7-10 have not been shown to be unpatentable.

DECISION

The Examiner's rejection of claims 1-5 and 7-10 is reversed.