Appeal No. 2001-1041 Page 13
Application No. 09/219,475
Moreover, even if present 37 CFR § 1.104(e) had been in
effect when the appellants' original application was pending, we
do not consider that the recapture rule would preclude them from
obtaining the claims now on appeal.
Discussing what may constitute a surrender for purposes of
the recapture rule, the Court in Hester Industries, 142 F.3d at
1481, 46 USPQ2d at 1648, stated that:
as a general proposition, in determining whether there is a
surrender, the prosecution history of the original patent
should be examined for evidence of an admission by the
patent applicant regarding patentability. . . . In this
regard, claim amendments are relevant because an amendment
to overcome a prior art rejection evidences an admission
that the claim was not patentable. . . . Arguments made to
overcome prior art can equally evidence an admission
sufficient to give rise to a finding of surrender. . . .
Logically, this is true even when the arguments are made in
the absence of any claim amendment. Amendment of a claim is
not the only permissible predicate for establishing a
surrender.
In the present case, the claims in appellants' original
application were, as noted previously, allowed in the first
Office action. Consequently, the prosecution history of the
original application contains none of the evidence relevant to
surrender discussed in Hester Industries, supra, in that it
contains neither any amendments to the claims, nor any arguments
made by the appellants to overcome prior art or for any other
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