Appeal No. 2001-1596
Application 09/296,102
In effect, the examiner seems to be retroactively applying
the Nov. 7, 2000 amendment of the rules, supra, by which this
provision was removed from § 1.104(e), but an agency does not
have the authority to promulgate retroactive rules unless
expressly given that authority by Congress, Motion Picture Assn.
of America Inc. v. Oman, 969 F.2d 1154, 1156, 23 USPQ2d 1447,
1449 (D.C.Cir. 1992), and the PTO has not been given such
authority.
Moreover, even if present 37 CFR § 1.104(e) had been in
effect when 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.
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