       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

     IN RE: GENERAL ELECTRIC COMPANY,
                     Appellant
              ______________________

            2019-1112, 2019-1113, 2019-1115
                ______________________

    Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. 14/593,087,
15/070,427, 15/070,483.
                 ______________________

               Decided: October 18, 2019
                ______________________

    STEPHANIE M. LAUNDRE, Ziolkowski Patent Solutions
Group, SC, Port Washington, WI, for appellant. Also rep-
resented by TIMOTHY J. ZIOLKOWSKI.

   MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, for appellee
Andrei Iancu. Also represented by MICHAEL S. FORMAN,
THOMAS W. KRAUSE, JOSEPH MATAL, AMY J. NELSON.
                ______________________

    Before MOORE, REYNA, and CHEN, Circuit Judges.
PER CURIAM.
    General Electric Company (General Electric) appeals
from three decisions of the Patent Trial and Appeal Board
2                          IN RE: GENERAL ELECTRIC COMPANY




rejecting all pending claims in U.S. Patent Application
Nos. 14/593,087 (the ’087 application), 15/070,427 (the ’427
application), and 15/070,483 (the ’483 application) (collec-
tively, the reissue applications containing the reissue
claims) under 35 U.S.C. § 251. See J.A. 1–135. Because we
hold that the reissue claims impermissibly attempt to re-
capture subject matter surrendered during prosecution of
U.S. Patent No. 7,990,705 (the ’705 patent), we affirm.
                       BACKGROUND
    The ’705 patent issued from U.S. Patent Application
No. 12/118,435 (the original application containing the
original claims) on August 2, 2011. It is directed to syn-
thetic jet enhanced convection cooling of component enclo-
sures, which encompass a heat-generating element. It
describes using a synthetic jet assembly to direct jet fluid
toward or onto the external surface of such enclosures.
   The original application, as filed, contained three inde-
pendent claims:
    1. A component enclosure comprising:
        one or more sidewalls defining a volume
        configured to substantially surround a heat
        generating component positioned within
        said volume; and
        a synthetic jet assembly positioned adja-
        cent at least one of the sidewalls, said syn-
        thetic jet assembly including at least one
        synthetic jet ejector comprising a jet port,
        said jet port aligned at least one of perpen-
        dicularly, parallelly, and obliquely with a
        surface of said at least one sidewall, said
        synthetic jet assembly is configured to di-
        rect a jet of fluid through said port at least
        one of substantially parallel to said surface,
        perpendicularly onto said surface, and
        obliquely toward said surface.
IN RE: GENERAL ELECTRIC COMPANY                              3



   *   *   *
   9. A method of increasing cooling of an enclosure,
   said method comprising positioning a synthetic jet
   assembly adjacent at least one of a plurality of side-
   walls of the enclosure, the synthetic jet assembly
   including at least one synthetic jet ejector includ-
   ing a jet port, the jet port being aligned at least one
   of perpendicularly, parallelly, and obliquely with a
   surface of the at least one sidewall, the synthetic
   jet assembly being configured to direct a jet of fluid
   through the jet port at least one of substantially
   parallel to the surface, perpendicularly onto the
   surface, and obliquely toward the surface.
   *   *   *
   17. An electronic component system comprising:
       a component enclosure comprising a plural-
       ity of sidewalls defining a volume;
       a heat generating component positioned
       within the volume; and
       a synthetic jet assembly positioned adja-
       cent at least one of the plurality of side-
       walls, said synthetic jet assembly including
       at least one synthetic jet ejector comprising
       a jet port, said jet port aligned at least one
       of    perpendicularly,      parallelly,    and
       obliquely with a surface of said at least one
       sidewall, said synthetic jet assembly is con-
       figured to direct a jet of fluid through said
       port at least one of substantially parallel to
       said surface, perpendicularly onto said sur-
       face, and obliquely toward said surface.
J.A. 455–57.
   During prosecution of the original application, the ex-
aminer thrice rejected the original claims as anticipated
4                          IN RE: GENERAL ELECTRIC COMPANY




under 35 U.S.C. § 102(b) or obvious under 35 U.S.C.
§ 103(a). General Electric added limitations requiring that
the synthetic jet be external to the component enclosure
and that the jet of fluid be external to the component en-
closure in attempts to overcome the first two rejections. In
response to the third rejection, General Electric added a
limitation to each independent claim requiring attachment
of the synthetic jet assembly to a sidewall of the component
enclosure. With those amendments, the examiner deemed
the claims allowable.
        On August 1, 2013, General Electric filed a re-
    issue application. The examiner issued a re-
    striction requirement after determining that the
    application contained claims to both a component
    enclosure/jet assembly combination and a jet as-
    sembly subcombination. In response, General
    Electric filed three divisionals, which are the reis-
    sue applications on appeal. The ’087 application
    claims the component enclosure/jet assembly com-
    bination while the ’427 and ’483 applications claim
    the jet assembly subcombination.
     The examiner rejected all proposed claims based on de-
fective reissue declarations. General Electric appealed.
The Board reversed, pro forma, noting potential issues
with the examiner’s analysis. It then rejected the reissue
claims as an attempt to recapture subject matter intention-
ally surrendered during prosecution of the ’705 patent. The
Board found (1) that the reissue claims were broader than
the issued claims because the reissue claims can read on a
jet assembly unattached to a sidewall whereas the ’705 pa-
tent’s claims cannot; (2) that the broadened aspect of the
reissue claims relates to surrendered subject matter, i.e.,
an unattached jet assembly; and (3) that the surrendered
subject matter had crept into the reissue claims because
the attachment-related limitations added during prosecu-
tion were entirely absent from the proposed reissue claims.
The Board denied the applicant’s request for rehearing.
IN RE: GENERAL ELECTRIC COMPANY                             5



    The applicants timely appealed. This court has juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
                        DISCUSSION
    The Patent Act provides an avenue for patent holders
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 . . . . No
    new matter shall be introduced into the application
    for reissue.
35 U.S.C. § 251(a). An inventor may not, however, recap-
ture through reissue subject matter that was surrendered
to obtain allowance of the issued claims. In re Mostafaza-
deh, 643 F.3d at 1358. Whether proposed reissue claims
violate § 251 is a question of law, which we review de novo.
Id.
     We apply the recapture rule in three steps. Id. First,
“we determine whether and in what aspect the reissue
claims are broader than the patent claims.” In re Youman,
679 F.3d at 1343 (internal citation and quotation marks
omitted). Second, we “determine whether the broader as-
pects of the reissue claims relate to surrendered subject
matter.” In re Clement, 131 F.3d at 1468–69. 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 sub-
stantial recapture of the subject matter surrendered dur-
ing prosecution is avoided.” Mostafazadeh, 643 F.3d at
6                           IN RE: GENERAL ELECTRIC COMPANY




1358. The narrowing must, therefore, relate to the surren-
dered subject matter. Id. at 1359; N. Am. Container, Inc.
v. Plastipak Packaging, Inc., 415 F.3d 1335, 1350 (Fed. Cir.
2005).
    The recapture rule does not apply to reissue claims di-
rected to “overlooked aspects” such as “additional inven-
tions/embodiments/species not originally claimed.”
Mostafazadeh, 643 F.3d at 1360. Overlooked aspects, how-
ever, are not merely incidental features of the originally
claimed invention. See id. Rather, they are distinct ele-
ments which “were never claimed and thus never surren-
dered.” Youman, 679 F.3d at 1347.
                    The ’087 Application
    The Board correctly concluded that the proposed claims
of the ’087 application impermissibly attempt to recapture
surrendered subject matter. First, the proposed reissue
claims are broader than the patent claims. The original
claims were amended in response to the examiner’s rejec-
tions to include limitations that the synthetic jet “is formed
integrally with a surface of at least one of the sidewalls and
external to said volume,” and “that the jet of fluid flows ex-
ternal to said volume.” ’705 patent at Claim 1. 1 The pro-
posed independent claims in the ’087 reissue application,



    1   Claims 7 and 13 contain similar limitations. Claim
7 was amended to include limitations that the “method
compris[es] coupling a synthetic jet assembly to an exter-
nal surface of at least one of a plurality of sidewalls of the
enclosure,” and “such that the jet of fluid flows external to
the enclosure.” And Claim 13 was amended to include lim-
itations that the synthetic jet assembly “compris[es] a
housing formed integrally with and positioned adjacent an
external surface of at least one of the plurality of sidewalls,”
and “that the jet of fluid flows external to the volume.” (em-
phasis added).
IN RE: GENERAL ELECTRIC COMPANY                              7



claims 29 and 32, eliminate the attachment-related limita-
tions entirely. 2 Claim 29 of the ’087 application is illustra-
tive, and merely requires that the “synthetic jet assembly
[is] positioned to cool at least one of the sidewalls.” J.A.
150. The elimination of the attachment limitation expands
the scope of the claims to cover unattached jet assemblies
which were surrendered during prosecution.
     The expanded scope of the ’087 application’s claims in-
jects the surrendered subject matter into the claims, satis-
fying steps two and three of the recapture rule. General
Electric argues that the Board characterized the nature of
the surrendered subject matter in an unreasonably restric-
tive manner. Appellant Br. at 19–35. It contends the sur-
rendered subject matter related generally to the
positioning of the synthetic jet assembly rather than spe-
cifically to attachment. Id. at 21. We disagree. During
prosecution of the original application, the applicant twice
amended the claims to add limitations related to position-
ing of the synthetic jet to no avail. Only after the applicant
added language requiring some type of attachment to a
sidewall did the examiner allow the claims over the prior
art. Thus, the Board correctly determined that the surren-
dered subject matter was an unattached jet assembly.
    General Electric argues that the ’087 application’s
claims avoid violating the recapture rule because the reis-
sue claims recite additional narrowing limitations. The ad-
ditional limitations identified by General Electric,
however, relate only to positioning of the synthetic jet as-
sembly. Any narrowing accomplished by those limitations
is thus unrelated to the surrendered subject matter and
therefore insufficient to avoid recapture. See Mostafaza-
deh, 643 F.3d at 1358.



    2   General Electric does not separately argue the pa-
tentability of the dependent claims of the ’087 application.
8                         IN RE: GENERAL ELECTRIC COMPANY




    General Electric also argues that the recapture rule
does not apply to claims 29 and 32 of the ’087 application
because they include narrowing limitations that constitute
overlooked aspects of the invention. Appellant Br. at 48–
56. We disagree. Each purportedly narrowing limitation
identified by General Electric was within the scope of at
least one original claim of the ’705 patent and therefore,
cannot be said to be an “overlooked aspect.” We therefore
hold that the Board correctly determined that claims 29
and 32 of the ’087 application are unpatentable under §
251.
              The ’427 and ’483 Applications
    General Electric does not dispute that independent
claims 16 and 31 of the ’427 application and independent
claims 16 and 26 of the ’483 application attempt to recap-
ture disclaimed subject matter. 3 Rather, General Electric
argues that its proposed reissue claims that cover only the
jet assembly subcombination avoid the recapture rule un-
der the “overlooked aspects” analysis. Appellant Br. at 35–
48. Claim 16 of the ’427 application is illustrative:
    16. A synthetic jet assembly comprising:
        a housing;
        a plurality of synthetic jet ejectors posi-
        tioned within the housing and oriented in
        serial flow communication, the plurality of
        synthetic jet ejectors comprising at least a
        first synthetic jet ejector and a last syn-
        thetic jet ejector;




    3   As is the case with respect to the ’087 application,
General Electric does not separately argue the patentabil-
ity of the dependent claims of the ’427 and ’483 applica-
tions.
IN RE: GENERAL ELECTRIC COMPANY                             9



        an internal jet port formed in the housing
        between adjacent synthetic jet ejectors of
        the plurality of synthetic jet ejectors; and
        an external jet port formed in the last syn-
        thetic jet ejector and aligned with the inter-
        nal jet port.
J.A. 274.
     We agree with the Board’s conclusion that the
standalone jet assembly was within the scope of the origi-
nally filed claims and, thus, not overlooked. See, e.g., J.A.
33–35. The original claims encompass and detail the ele-
ments of the jet assembly subcombination. For example,
original claim 1 includes a “synthetic jet assembly includ-
ing at least one synthetic jet ejector comprising a jet
port . . . said synthetic jet assembly is configured to direct
a jet of fluid through said port . . . .” Because the original
claims encompass the jet assembly subcombination, that
subcombination is not an overlooked aspect of the inven-
tion.
                        CONCLUSION
   We have considered General Electric’s remaining argu-
ments but find them unpersuasive. For the foregoing rea-
sons, we affirm the Board’s rejection of the reissue claims.
                        AFFIRMED
