Appeal 2006-1989
Application 09/772,278
Patent 5,996,948
limitation is merely a restatement of an original claim limitation (“the upper
rim and the lower rim lie in substantial parallel alignment to one another”)
and is not in fact a limitation added by amendment.
We find the record of the original application would lead an objective
observer to conclude with respect to limitations related to the lower rim that
no deliberate surrender happened in order to avoid an obstacle to
patentability. Yoon Ja Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323,
80 USPQ2d 1495, 1502 (Fed. Cir. 2006).
We conclude that while the Examiner has initially demonstrated a
prima facie case of reissue recapture, the Appellant has rebutted that prima
facie case by showing the broader “lower rim” aspects of the reissued claim
do not relate to surrendered subject matter.
DISCUSSION – REJECTION UNDER 35 U.S.C. § 102
A. The Prima Facie Case
Finding of Fact 39 sets forth the Examiner’s prima facie case for
anticipation with respect to claims 1, 2, and 5.
- 19 -
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: September 9, 2013