Appeal No. 1998-2911
Application 08/314,345
other part of the prosecution history which indicates that
either the examiner or the appellants considered the “in
parallel planes” limitation necessary to overcome the prior
art. To infer otherwise from the remarks accompanying the
amendment which mentioned both limitations in urging the
patentability of claims 1 and 2 over the prior art would be
unwarranted. Indeed, given the context of the “in parallel
planes” limitation within the other added limitation, it would
have been surprising had counsel not referred to both in
arguing for the allowance of the claims.
In light of the foregoing, the absence of the “in
parallel planes” language from reissue claims 35 and 36 does
not pose a recapture problem. Accordingly, we shall not
sustain the standing 35 U.S.C. § 251 rejection of these
claims.
The decision of the examiner is reversed.
REVERSED
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