Appeal No. 2001-1596
Application 09/296,102
In the present case, the claims in appellants’ original
application were, as noted previously, allowed in the first
Office action. Consequently, the prosecution history of the
original application contains none of the evidence relevant to
surrender discussed in Hester Industries, supra, in that it
contains neither any amendments to the claims3, nor any arguments
made by appellants to overcome prior art or for any other
purpose. Appellants’ only “argument” was their lack of response
to the examiner’s statement of reasons for allowance, and we know
of no decision which holds that, under the recapture rule, a
surrender may result from an applicant’s failure to act, as
opposed to taking a positive action such as changing the claims
or presenting an argument.
However, even if it might be considered that, by analogy to
prosecution history estoppel, a surrender may arise from an
applicant’s failure to file a statement or comments in response
to the examiner’s statement of reasons for allowance4, it is not
3 Except for the minor amendments made by the examiner (see
footnote 1, supra) which are not relevant here.
4 For example, such a lack of response was considered as a
factor in the prosecution history limiting the interpretation of
the patent claims in Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d
973, 979, 52 USPQ2d 1109, 1113-14 (Fed. Cir. 1999).
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007