Appeal No. 2001-1041 Page 14
Application No. 09/219,475
purpose. Under the facts of this case, we know of no decision
which holds either that (1) under the recapture rule, a surrender
resulted from the appellants' failure to file a statement or
comments in response to the examiner's statement of reasons for
allowance, or (2) under prosecution history estoppel, a surrender
resulted from the appellants' failure to file a statement or
comments in response to the examiner's statement of reasons for
allowance.
Lastly, we note that the decision reached herein is
consistent with the Board of Patent Appeals and Interferences'
decision rendered on July 31, 2001 in Ex parte Yamaguchi on
reissue Application No. 09/296,102, which has been made
publically avaiable on our web site at
http://www.uspto.gov/web/offices/com/sol/foia/bpai/fd011596.pdf.5
CONCLUSION
We conclude, based on the facts before us in this case, that
the appellants surrendered nothing during the prosecution of
5 This is the only decision that we are aware of dealing
with the issue of whether an examiner's statement of reasons for
allowance in a first action issue constitutes a surrender under
either the recapture rule or prosecution history estoppel.
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