Appeal No. 2002-1668 Page 14
Application No. 09/531,666
we know of no decision which holds either that (1) under the recapture rule, a surrender
resulted from the appellant's 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 appellant's 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, 61 USPQ2d 1043 (Bd. Pat. App. & Int. 2001) on reissue Application No.
09/296,102.5
CONCLUSION
We conclude, based on the facts before us in this case, that the appellant
surrendered nothing during the prosecution of their original application. Consequently,
5 The Board of Patent Appeals and Interferences has now determined that the decision set forth in
the opinion in Ex parte Yamaguchi is binding precedent of the Board (see
http://www.uspto.gov/web/offices/dcom/bpai/prec.htm).
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007