Appeal No. 2002-1668 Page 13
Application No. 09/531,666
v. Oman, 969 F.2d 1154, 1156, 23 USPQ2d 1447, 1449 (D.C.Cir. 1992), and the
USPTO has not been given such authority.
Moreover, even if present 37 CFR § 1.104(e) had been in effect when the
appellant's original application was pending, we do not consider that the recapture rule
would preclude him 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 the appellant's original application were, as noted
previously, allowed without having been rejected over prior art. 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 purpose pertinent to this appeal. Under the facts of this case,
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007