UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES Ex parte MITSUHIRO NADA Appeal 2010-011219 Technology Center 3600 Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge, and LINDA E. HORNER and KEN B. BARRETT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL 1 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.
STATEMENT OF THE CASE Mitsuhiro Nada (Appellant) seeks our review under 35 U.S.C. 134 of the Examiner s decision rejecting claims 52-74 in reissue application 10/977,627. This reissue application seeks to reissue U.S. Patent 6,493,618 B2, issued December 10, 2002, based on Application 09/790,617, filed February 23, 2001. The reissue application contains claims 1-74. Claims 1-51 stand allowed. We have jurisdiction under 35 U.S.C. 6(b). We REVERSE. SUMMARY OF DECISION THE INVENTION Appellant s claimed invention is directed to a vehicle control technique performed when some of the vehicle sensors have developed a fault. 618 Patent, col. 1, ll. 7-10. Claim 52, reproduced below, is representative of the subject matter on appeal. 52. A control device for controlling a prescribed control object using first and second sensors configured to provide a control input, the control device comprising: a fault detector configured to detect that one of the first and second sensors has developed a fault by analyzing temporal variation patterns of outputs of the first and second sensors when the outputs of the first and second sensors remain within respective normal output ranges thereof, the fault detector detecting a faulty sensor by determining whether the temporal variation pattern output by each sensor corresponds to one of a plurality of preset fault patterns that represent mutually different fault events; and a control input setting section configured to determine the 2
control input using an output of a normal sensor other than the faulty sensor when the faulty sensor has been detected by the fault detector, the control input setting section dividing a full range of output signal levels of the normal sensor into a plurality of regions in which the control input changes at different rates of change, the control input setting section determining a change in the control input depending on which of the plurality of regions contains the output signal level of the normal sensor. THE REJECTION Appellant seeks review of the Examiner s rejection of claims 52-74 under 35 U.S.C. 251 as being an improper recapture of subject matter surrendered in the application for the patent upon which the present reissue is based. ISSUES The Examiner determined that claims 52-74 violate the rule against recapture because (1) these claims fail to recite that the regions of the output signal levels of the normal sensor include an opening region in which the accelerator control input increases at a first rate of change and a closing region in which the accelerator control input decreases at a second rate of change, and (2) such feature was argued by Appellant during prosecution of the application for the patent upon which the present reissue is based to overcome a prior art rejection. Ans. 5-6. Appellant argues that the above-mentioned feature was not necessary to distinguish over [the prior art] and was provided [in Appellant s 3
arguments] only as an example of the broad-based distinction that was necessary to distinguish over [the prior art] and thus Appellant did not clearly and unmistakably surrender subject matter between his example and his broader argument. App. Br. 21. Appellant further argues that claims 66-68, which depend from the original, unamended patent claims, are narrower than the original patent claims, and thus cannot be rejected for recapture. App. Br. 26. The issues presented by this appeal are: Do the broader aspects of claims 52-65 and 69-74, which omit the requirement that the regions of the output signal levels of the normal sensor include an opening region in which the accelerator control input increases at a first rate of change, and a closing region in which the accelerator control input decreases at a second rate of change, relate to subject matter surrendered by arguments made during prosecution of the application for the patent upon which the present reissue is based? Do reissue claims 66, 67, and 68, which depend from original patent claims 1, 18, and 35, respectively, improperly recapture subject matter surrendered in the application for the patent upon which the present reissue is based? 4
FINDINGS OF FACT We find that the following enumerated findings are supported by at least a preponderance of the evidence. 1. Appellant filed application 09/790,617 on February 23, 2001 ( the 617 application ) containing claims 1-51. 2. In a non-final Office Action, dated April 10, 2002, the Examiner rejected claims 1-51 under 35 U.S.C. 102(e) as being anticipated by U.S. Patent 6,116,214 to Ishida, issued September 12, 2000. 3. Appellant s representative then conducted an interview with the Examiner at which claims 1, 18, and 35 and the prior art to Ishida were discussed. Examiner Interview Summary, dated June 5, 2002. 4. The Examiner s summary of the substance of the interview stated, in part: Applicant s representative argues that [Ishida] does not disclose the limitations of the claims as stated dividing a full range of output signal levels of the normal sensor into a plurality of regions including an opening region in which the accelerator control input increases at a first rate of change, and a closing region in which the accelerator control input decreases at a second rate of change. Examiner Interview Summary at 3. 5
5. Appellant thereafter submitted a response to the office action and interview summary, in which Appellant argued: According to Ishida, a sensor output signal from a normal sensor is subjected to delay processing and limited to a guard value, but changes of the sensor output signal will be nevertheless reflected to the throttle opening in all range of the sensor output signal. Contrarily, according to the claimed invention, the full range of the sensor output signal is divided into a plurality of regions, and the change rate of the accelerator control input is determined depending on which of the plurality of regions contains the output signal level of the normal sensor. For example, the accelerator control input for the presently claimed invention increases when the output signal level of the normal sensor is present in the opening region, and it decreases when the output level signal level of the normal sensor is present in the closing region, wherein the first and second rates are not necessarily different and they may have an identical value. These features are not disclosed or suggested by Ishida. Thus, Ishida does not disclose or suggest the accelerator control input setting section dividing a full range of output signal levels of the normal sensor into a plurality of regions including an opening region in which the accelerator control input increases at a first range of change, and a closing region in which the accelerator control input decreases at a second rate of change, the accelerator control input setting section determining a change in the accelerator control input depending on which of the plurality of regions contains the output signal level of the normal sensor, as recited in claims 1, 18 and 35. 6
Request for Reconsideration at 1-2. 6. Appellant did not amend claims 1-51 in response to the office action. Request for Reconsideration at 1-2. 7. The Examiner thereafter issued a Notice of Allowance, and the 617 application issued as U.S. on December 10, 2002. PRINCIPLES OF LAW The Federal Circuit has described application of the recapture rule as a three-step process : (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine 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. No. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (citing Pannu v. Storz Instruments, Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001)). 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. Thus, if the objective public observer can 7
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). A surrender can occur by argument as well as by amendment. Hester [Indus., Inc. v. Stein, Inc.], 142 F.3d [1472,] 1480-84 [(Fed. Cir. 1998)] (noting the statement in Clement that [t]o determine whether an applicant surrendered particular subject matter, we look to the prosecution history for arguments and changes to the claims made in an effort to overcome a prior art rejection (quoting [In re] Clement, 131 F.3d [1464,] 1469 [(Fed. Cir. 1997)]) (emphasis added in Hester, 142 F.3d at 1480)). We stated in Hester that, like prosecution history estoppel, unmistakable assertions made to the Patent Office in support of patentability can give rise to a surrender for purposes of the recapture rule. Id. at 1482. Medtronic, Inc. v. Guidant Corp., 465 F.3d 1360, 1373 (Fed. Cir. 2006). Claims 52-65 and 69-74 ANALYSIS Upon review of the arguments submitted by Appellant during prosecution of the 617 application, we conclude that these arguments did not amount to an unmistakable assertion in support of patentability that would give rise to surrender of the subject matter now being claimed in claims 52-65 and 69-74. While we acknowledge that this is a close case, the crux of Appellant s argument made during the 617 application to overcome the anticipation rejection based on Ishida was that Ishida does not disclose that 8
the full range of the sensor output signal is divided into a plurality of regions, and the change rate of the accelerator control input is determined depending on which of the plurality of regions contains the output signal level of the normal sensor. Fact 5. In particular, Appellant contrasted this feature of the claim with the control system of Ishida in which a sensor output signal from a normal sensor is subjected to delay processing and limited to a guard value, but changes of the sensor output signal will be nevertheless reflected to the throttle opening in all range[s] of the sensor output signal (emphasis added). Fact 5. As such, we find that a person having ordinary skill in the art would understand Appellant to have argued that the patentable distinction of the claimed control device over the control device of Ishida is that the claimed control device divides the full range of the sensor output signal into a plurality of regions and uses these regions to determine the change rate of the accelerator control input. While Appellant s arguments provided an example of one way of determining the accelerator control input using the claimed regions, we find that a person having ordinary skill in the art would understand this example to be merely illustrative of the claimed invention and not as being necessary to distinguish the claimed invention from Ishida. While the Appellant s arguments end with a conclusory paragraph in which Appellant recited the language from the entire claim accelerator control input limitation, we find that a person having ordinary skill in the art, reading this conclusory paragraph in light of the prior arguments made by 9
Appellant, Appellant s claims, and the disclosure of Ishida, would not understand this paragraph to be an unmistakable assertion that the opening and closing regions are the features that distinguish the claimed control device from Ishida s control device. Finally, we note that Appellant in this instance did not amend the claims in response to the rejection over Ishida to add the language now being omitted from the reissue claims on appeal. Fact 6. This is an important factor in our decision because [d]eliberately canceling or amending a claim in an effort to overcome a [prior art] reference strongly suggests that the Applicant admits that the scope of the claim before cancellation or amendment is unpatentable. In re Clement, 131 F.3d 1464, 1469 (Fed. Cir. 1997). See also Hester Indus., 142 F.3d at 1481 ( an amendment to overcome a prior art rejection evidences an admission that the claim was not patentable ). Each of the independent apparatus claims 52, 55, 57, 63 2, and 64 recites the control input setting section dividing a full range of output signal levels of the normal sensor into a plurality of regions in which the control input changes at different rates of change, [and] the control input setting section determining a change in the control input depending on which of the plurality of regions contains the output signal level of the normal sensor. 2 Claim 63 recites the first or second sensor in place of the normal sensor. 10
Each of the independent method claims 58, 61, and 65 3 similarly recites the steps of dividing a full range of output signal levels of the normal sensor into a plurality of regions in which the control input changes at different rates of change, and determining a change in the control input depending on which of the plurality of regions contains the output signal level of the normal sensor. These were the same features argued by Appellant in the 617 application to overcome the rejection based on Ishida. Fact 5. As such, reissue claims 52-65 and 69-74 do not impermissibly recapture surrendered subject matter. Hence, we will reverse the rejection of claims 52-65 and 69-74 under 35 U.S.C. 251. Claims 66-68 Claims 66, 67, and 68 depend from original, unamended claims 1, 18, and 35, respectively. Each of these dependent claims, by virtue of its dependency, includes the limitation of the accelerator control input setting section dividing a full range of output signal levels of the normal sensor into a plurality of regions include an opening region in which the accelerator control input increases at a first rate of change, and a closing region in which the accelerator control input decreases at a second rate of change. Thus, these claims do not do not impermissibly recapture surrendered subject matter. Hence, we will reverse the rejection of claims 66-68 under 35 U.S.C. 251. 3 Claim 65 recites the first or second sensor in place of the normal sensor. 11
CONCLUSIONS The broader aspects of claims 52-65 and 69-74, which omit the requirement that the regions of the output signal levels of the normal sensor include an opening region in which the accelerator control input increases at a first rate of change, and a closing region in which the accelerator control input decreases at a second rate of change, do not relate to subject matter surrendered by arguments made during prosecution of the application for the patent upon which the present reissue is based. Reissue claims 66, 67, and 68, which depend from original patent claims 1, 18, and 35, respectively, do not improperly recapture subject matter surrendered in the application for the patent upon which the present reissue is based. DECISION The decision of the Examiner to reject claims 52-74 is REVERSED. REVERSED nlk OLIFF & BERRIDGE, PLC P.O. BOX 320850 ALEXANDRIA VA 22320-4850 12