Appeal No. 2001-1596
Application 09/296,102
evident here what appellants could be said to have surrendered by
their non-response. As they aptly state on page 12 of their
brief:
The nature of the examiner’s statement of “Reasons for
Allowance” did not invite any “counter statement or
comment.” Comparing the examiner’s “Reasons for Allowance”
with claim 1 as issued, it can be appreciated that the
“Reasons for Allowance” were merely a paraphrasing of
substantially the entirety of claim 1. . . . The fact that
the examiner’s “Reasons for Allowance” were simply a
restatement of the entirety of claim 1 as allowed, indicates
that the examiner did not attribute patentability to any one
or several features recited by the claim but, rather, found
that the claim as a whole distinguished over the prior art,
a conclusion which no applicant would want to dispute
because it amounts to no more than a recognition that the
whole of a claim must be considered in determining its
patentability. Panduit Corp. v. Dennison Manufacturing Co.,
[810 F.2d 1561,] 1 USPQ2d 1593 (Fed. Cir. 1987). Applicants
could not have reasonably be [sic: been] expected to argue
against such a finding.
If the examiner’s position here were carried to its logical
conclusion, appellants would be precluded by the recapture rule
from enlarging the scope of their patent claim 1 in any respect
whatsoever. In our view, such an interpretation of the recapture
rule would improperly have the effect of nullifying that portion
of § 251 which permits, where appropriate, enlarging the scope of
patent claims. This would be contrary to the purpose of the
reissue statute, which is “to remedy errors.” In re Bennett, 766
F.2d 524, 528, 226 USPQ 413, 416 (Fed. Cir. 1985).
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007