Appeal 2006-1989
Application 09/772,278
Patent 5,996,948
Appellant contends the Examiner has erred because (1) “there was
never any surrender of subject matter relating to the lower rim aspect of the
invention during the prosecution of the original application” (Br. 14); and
(2) the Examiner has failed to demonstrate the prior art teaches or suggests
each claim limitation (Br. 7).
We affirm the decision of the Examiner rejecting claims 1 and 2 under
35 U.S.C. § 102(b). We reverse the decision of the Examiner rejecting claim
5 under 35 U.S.C. § 102(b). We reverse the decision of the Examiner
rejecting claims 1-5 and 7 under 35 U.S.C. § 251. We use our authority
under 37 C.F.R. § 41.50(b) to enter a new ground of rejection of claims 1-5
and 7.
ISSUES
The issues before the Board are:
(1) Whether Appellant has established the Examiner erred in finally
rejecting claims 1-5 and 7 under 35 U.S.C. § 251 because Appellant
has rebutted the Examiner’s initial prima facie showing of recapture?
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