Appeal No. 1999-0323 Page 8
Application No. 08/079,504
determined which limitations the appellants have deleted from
the patent claims.
The second step is to determine whether the broader
aspects of the reissue claims relate to surrendered subject
matter. To determine whether the appellants have surrendered
particular subject matter, one must look to the prosecution
history for arguments and changes to the claims made in an
effort to overcome a prior art rejection. The examiner has
not cited any prosecution history that establishes the changes
to the claims in the parent application regarding the "small"
size of the position sensitive detector were made in an effort
to overcome a prior art rejection.
The third step is that once it is determined that the
appellants have surrendered the subject matter of the canceled
or amended claim, it must then be determined whether the
surrendered subject matter has crept into the rejected
reissue claims. Comparing the reissue claim with the canceled
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